STC.UNM v. Intel Corporation

Filing 76

RESPONSE in Opposition re 67 MOTION to Amend/Correct 63 Order on Motion for Protective Order filed by STC. UNM. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D)(Pedersen, Steven)

Exhibit C
Excerpts from
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
PROTECTIVE ORDER, Judge Ward

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
§
§
§
§
§

V.

PROTECTIVE ORDER
WHEREAS, Plaintiff ___________________ and Defendant _____________________,
hereafter referred to as “the Parties,” believe that certain information that is or will be
encompassed by discovery demands by the Parties involves the production or disclosure of trade
secrets, confidential business information, or other proprietary information;
WHEREAS, the Parties seek a protective order limiting disclosure thereof in accordance
with Federal Rule of Civil Procedure 26(c):
THEREFORE, it is hereby stipulated among the Parties and ORDERED that:
1.

Each Party may designate as confidential for protection under this Order, in whole or in
part, any document, information or material that constitutes or includes, in whole or in
part, confidential or proprietary information or trade secrets of the Party or a Third Party
to whom the Party reasonably believes it owes an obligation of confidentiality with
respect to such document, information or material (“Protected Material”). Protected
Material shall be designated by the Party producing it by affixing a legend or stamp on
such document, information or material as follows: “CONFIDENTIAL.” The word
“CONFIDENTIAL” shall be placed clearly on each page of the Protected Material
(except deposition and hearing transcripts) for which such protection is sought. For
deposition and hearing transcripts, the word “CONFIDENTIAL” shall be placed on the

DESIGNATED MATERIAL or the contents thereof pursuant to this Order shall not
make any copies, duplicates, extracts, summaries or descriptions of such DESIGNATED
MATERIAL or any portion thereof except as may be reasonably necessary in the
litigation of this Action. Any such copies, duplicates, extracts, summaries or descriptions
shall be classified DESIGNATED MATERIALS and subject to all of the terms and
conditions of this Order.
8.

To the extent a producing Party believes that certain Protected Material qualifying to be
designated CONFIDENTIAL is so sensitive that its dissemination deserves even further
limitation, the producing Party may designate such Protected Material “RESTRICTED -ATTORNEYS’ EYES ONLY,” or to the extent such Protected Material includes
computer source code and/or live data (that is, data as it exists residing in a database or
databases) (“Source Code Material”), the producing Party may designate such Protected
Material as “RESTRICTED CONFIDENTIAL SOURCE CODE.”

9.

For Protected Material designated RESTRICTED -- ATTORNEYS’ EYES ONLY,
access to, and disclosure of, such Protected Material shall be limited to individuals listed
in paragraphs 5(a-c) and (e-g); provided, however, that access by in-house counsel
pursuant to paragraph 5(c) be limited to in-house counsel who exercise no competitive
decision-making authority on behalf of the client.

10.

For Protected Material designated RESTRICTED CONFIDENTIAL SOURCE CODE,
the following additional restrictions apply:
(a)

Access to a Party’s Source Code Material shall be provided only on “stand-alone”
computer(s) (that is, the computer may not be linked to any network, including a
local area network (“LAN”), an intranet or the Internet). The stand-alone
computer(s) may be connected to (i) a printer, or (ii) a device capable of
temporarily storing electronic copies solely for the limited purposes permitted
5

pursuant to paragraphs 10 (h and k) below. Additionally, except as provided in
paragraph 10(k) below, the stand-alone computer(s) may only be located at the
offices of the producing Party’s outside counsel;
(b)

The receiving Party shall make reasonable efforts to restrict its requests for such
access to the stand-along computer(s) to normal business hours, which for
purposes of this paragraph shall be 8:00 a.m. through 6:00 p.m. However, upon
reasonable notice from the receiving party, the producing Party shall make
reasonable efforts to accommodate the receiving Party’s request for access to the
stand-alone computer(s) outside of normal business hours. The Parties agree to
cooperate in good faith such that maintaining the producing Party’s Source Code
Material at the offices of its outside counsel shall not unreasonably hinder the
receiving Party’s ability to efficiently and effectively conduct the prosecution or
defense of this Action;

(c)

The producing Party shall provide the receiving Party with information explaining
how to start, log on to, and operate the stand-alone computer(s) in order to access
the produced Source Code Material on the stand-alone computer(s);

(d)

The producing Party will produce Source Code Material in computer searchable
format on the stand-alone computer(s) as described above;

(e)

Access to Protected Material designated RESTRICTED CONFIDENTIAL SOURCE CODE shall be limited to outside counsel and up to three (3) outside
consultants or experts2 (i.e., not existing employees or affiliates of a Party or an
affiliate of a Party) retained for the purpose of this litigation and approved to
access such Protected Materials pursuant to paragraph 5(e) above. A receiving
Party may include excerpts of Source Code Material in a pleading, exhibit, expert
report, discovery document, deposition transcript, other Court document, provided
that the Source Code Documents are appropriately marked under this Order,
restricted to those who are entitled to have access to them as specified herein, and,
if filed with the Court, filed under seal in accordance with the Court’s rules,
procedures and orders;

(f)

To the extent portions of Source Code Material are quoted in a Source Code
Document, either (1) the entire Source Code Document will be stamped and
treated as RESTRICTED CONFIDENTIAL SOURCE CODE or (2) those pages
containing quoted Source Code Material will be separately stamped and treated as
RESTRICTED CONFIDENTIAL SOURCE CODE;

2

For the purposes of this paragraph, an outside consultant or expert is defined to include the
outside consultant’s or expert’s direct reports and other support personnel, such that the
disclosure to a consultant or expert who employs others within his or her firm to help in his or
her analysis shall count as a disclosure to a single consultant or expert.
6

(g)

(h)

The receiving Party shall be permitted to make a reasonable number of printouts
and photocopies of Source Code Material, all of which shall be designated and
clearly labeled “RESTRICTED CONFIDENTIAL SOURCE CODE,” and the
receiving Party shall maintain a log of all such files that are printed or
photocopied;

(i)

Should such printouts or photocopies be transferred back to electronic media,
such media shall be labeled “RESTRICTED CONFIDENTIAL SOURCE CODE”
and shall continue to be treated as such;

(j)

If the receiving Party’s outside counsel, consultants, or experts obtain printouts or
photocopies of Source Code Material, the receiving Party shall ensure that such
outside counsel, consultants, or experts keep the printouts or photocopies in a
secured locked area in the offices of such outside counsel, consultants, or expert.
The receiving Party may also temporarily keep the printouts or photocopies at: (i)
the Court for any proceedings(s) relating to the Source Code Material, for the
dates associated with the proceeding(s); (ii) the sites where any deposition(s)
relating to the Source Code Material are taken, for the dates associated with the
deposition(s); and (iii) any intermediate location reasonably necessary to transport
the printouts or photocopies (e.g., a hotel prior to a Court proceeding or
deposition); and

(k)

11.

Except as set forth in paragraph 10(k) below, no electronic copies of Source Code
Material shall be made without prior written consent of the producing Party,
except as necessary to create documents which, pursuant to the Court’s rules,
procedures and order, must be filed or served electronically;

A producing Party’s Source Code Material may only be transported by the
receiving Party at the direction of a person authorized under paragraph 10(e)
above to another person authorized under paragraph 10(e) above, on paper or
removable electronic media (e.g., a DVD, CD-ROM, or flash memory “stick”) via
hand carry, Federal Express or other similarly reliable courier. Source Code
Material may not be transported or transmitted electronically over a network of
any kind, including a LAN, an intranet, or the Internet. Source Code Material
may only be transported electronically for the purpose of Court proceeding(s) or
deposition(s) as set forth in paragraph 10(j) above and is at all times subject to the
transport restrictions set forth herein. But, for those purposes only, the Source
Code Materials may be loaded onto a stand-alone computer.

Any attorney representing a Party, whether in-house or outside counsel, and any person
associated with a Party and permitted to receive the other Party’s Protected Material that
is designated RESTRICTED -- ATTORNEYS’ EYES ONLY and/or RESTRICTED
7

Jackson Walker IP e-Alert: East Texas Court Adopts Protective Order for Cases Involvin...

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December 22, 2009

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East Texas Court Releases Standard
Protective Order for Patent Litigation
Cases Involving Source Code
By John Jackson
During status conference hearings conducted on Monday, December
14, 2009, Magistrate Judge Everingham announced the adoption of a
standard Protective Order applicable to patent litigation matters
involving source code pending before Judge Ward and Judge
Everingham. A copy of this standard Protective Order is available by
clicking here.

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Paragraph 10 of the Protective Order contains the key provisions
relating to source code. Among other things, Paragraph 10 provides
as follows:
 Access to a Party’s Source Code Material shall be provided













only on “stand-alone” computer(s) (that is, the computer may
not be linked to any network, including a local area network
(“LAN”), an intranet or the Internet) . . . Additionally, except
as provided in paragraph 10(k) below, the stand-alone
computer(s) may only be located at the offices of the
producing Party’s outside counsel;
The receiving Party shall make reasonable efforts to restrict its
requests for such access to the stand-along computer(s) to
normal business hours, which for purposes of this paragraph
shall be 8:00 a.m. through 6:00 p.m. . . . ;
The producing Party shall provide the receiving Party with
information explaining how to start, log on to, and operate the
stand-alone computer(s) in order to access the produced
Source Code Material on the stand-alone computer(s);
The producing Party will produce Source Code Material in
computer searchable format on the stand-alone computer(s)
as described above;
Access to Protected Material designated RESTRICTED
CONFIDENTIAL - SOURCE CODE shall be limited to outside
counsel and up to three (3) outside consultants or experts2
(i.e., not existing employees or affiliates of a Party or an
affiliate of a Party) . . . ;
To the extent portions of Source Code Material are quoted in a
Source Code Document, either (1) the entire Source Code
Document will be stamped and treated as RESTRICTED
CONFIDENTIAL SOURCE CODE or (2) those pages containing
quoted Source Code Material will be separately stamped and
treated as RESTRICTED CONFIDENTIAL SOURCE CODE;
Except as set forth in paragraph 10(k) below, no electronic
copies of Source Code Material shall be made without prior
written consent of the producing Party;

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Jackson Walker IP e-Alert: East Texas Court Adopts Protective Order for Cases Involvin...

Page 2 of 2

This Protective Order was likely adopted in an effort to avoid disputes
between the parties concerning the procedures for producing and
using source code in patent litigation. For example, in SBJ IP Holdings
1 LLC v. Blockbuster, Inc., et. al, CA No. 2:09-cv-29, the parties were
unable to agree upon the terms of a Protective Order relating to
source code and filed competing briefs concerning the procedures for
producing source code. On December 4, 2009, Judge Everingham
entered an Order providing that source code could be produced on a
stand-alone computer at the offices of the producing party’s outside
counsel (rather than being produced directly to Plaintiff’s counsel). As
in this December 4, 2009 ruling, the standard Protective Order allows
the producing party to produce source code on a stand-alone
computer at the offices of its outside counsel.
While this standard Protective Order was created for use in patent
cases involving source code that are pending before Judges Ward and
Everingham, other judges in the Eastern District of Texas will likely
consider this standard Protective Order to be persuasive authority in
connection with disputes concerning source code provisions in patent
cases pending in their courts.
If you have any questions regarding this e-Alert, please contact John
Jackson at 214.953.6109 or [e-mail].

2

For the purposes of this paragraph, an outside consultant or expert is
defined to include the outside consultant’s or expert’s direct reports and
other support personnel, such that the disclosure to a consultant or expert
who employs others within his or her firm to help in his or her analysis shal
count as a disclosure to a single consultant or expert.

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