Kewazinga Corp. v. Google LLC

Filing 42

STIPULATION AND PROTECTIVE ORDER FOR LITIGATION INVOLVING PATENTS, HIGHLY SENSITIVE CONFIDENTIAL INFORMATION AND/OR TRADE SECRETS:...regarding procedures to be followed that shall govern the handling of confidential material. The parties are advised that the Court retains discretion as to whether to afford confidential treatment to redacted information in Orders and Opinions. SO ORDERED. (Signed by Judge Lorna G. Schofield on 5/05/2020) (ama)

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

KEWAZINGA CORP.,

Case No. 1:20-cv-1106-LGS
Plaintiff,

v.
GOOGLE LLC,
Defendant.

1.

XXXXXXXXXXX
STIPULATION AND [PROPOSED]
PROTECTIVE ORDER FOR LITIGATION
INVOLVING PATENTS, HIGHLY
SENSITIVE CONFIDENTIAL
INFORMATION AND/OR TRADE
SECRETS

PURPOSES AND LIMITATIONS
Disclosure and discovery activity in this action are likely to involve production of confidential,

proprietary, or private information for which special protection from public disclosure and from use for
any purpose other than prosecuting this litigation may be warranted. Accordingly, the Parties hereby
stipulate to and petition the Court to enter the following Stipulated Protective Order. The Parties
acknowledge that this Order does not confer blanket protections on all disclosures or responses to
discovery and that the protection it affords from public disclosure and use extends only to the limited
information or items that are entitled to confidential treatment under the applicable legal principles. The
Parties further acknowledge, as set forth in Section 14.4, below, that this Stipulated Protective Order does
not entitle them to file confidential information under seal; Rule 1.D of the Court’s Individual Rules and
Procedures for Civil Cases (“Individual Rules”) sets forth the procedures that must be followed and the
standards that will be applied when a Party seeks permission from the Court to file material under seal.
2.

DEFINITIONS
2.1

Challenging Party: a Party or Non-Party that challenges the designation of information or

items under this Order.
2.2

“CONFIDENTIAL” Information or Items: information (regardless of how it is generated,

stored or maintained) or tangible things that qualify for protection under Federal Rule of Civil Procedure

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26(c).
2.3

Counsel (without qualifier): Outside Counsel of Record and House Counsel (as well as

their support staff).
2.4

Designated House Counsel: House Counsel who seek access to “HIGHLY

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information in this matter.
2.5

Designating Party: a Party or Non-Party that designates information or items that it

produces in disclosures or in responses to discovery as “CONFIDENTIAL” or “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE
CODE”.
2.6

Disclosure or Discovery Material: all items or information, regardless of the medium or

manner in which it is generated, stored, or maintained (including, among other things, testimony,
transcripts, and tangible things), that are produced or generated in disclosures or responses to discovery in
this matter.
2.7

Expert: a person with specialized knowledge or experience in a matter pertinent to the

litigation who (1) has been retained by a Party or its counsel to serve as an expert witness or as a
consultant in this action, (2) is not a past or current employee of a Party or of a Party’s competitor, and (3)
at the time of retention, is not anticipated to become an employee of a Party or of a Party’s competitor.
2.8

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” Information or Items:

extremely sensitive “Confidential Information or Items,” disclosure of which to another Party or NonParty would create a substantial risk of serious harm that could not be avoided by less restrictive means.
2.9

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items: extremely

sensitive “Confidential Information or Items” representing 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

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means.
2.10

House Counsel: attorneys who are members in good standing of at least one state bar,

who are employees of a Party, and who have responsibility for managing this action. House Counsel does
not include Outside Counsel of Record or any other outside counsel.
2.11

Non-Party: any natural person, partnership, corporation, association, or other legal entity

not named as a Party to this action.
2.12

Outside Counsel of Record: attorneys who are not employees of a party to this action but

are retained to represent or advise a Party and have appeared in this action on behalf of that Party or are
affiliated with a law firm which has appeared on behalf of that Party.
2.13

Party: any party to this action.

2.14

Producing Party: a Party or Non-Party that produces Disclosure or Discovery Material in

this action.
2.15

Professional Vendors: persons or entities that provide litigation support services (e.g.,

photocopying, videotaping, translating, preparing exhibits or demonstrations, and organizing, storing, or
retrieving data in any form or medium, and professional jury or trial consultants) and their employees and
subcontractors, who (1) have been retained by a Party or its counsel to provide litigation support services
with respect to this action, (2) are (including any employees and subcontractors) not a past or current
employee of a Party or of a Party’s competitor, and (3) at the time of retention, are not anticipated to
become an employee of a Party or of a Party’s competitor.
2.16

Protected Material: any Disclosure or Discovery Material that is designated as

“CONFIDENTIAL,” or as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or as
“HIGHLY CONFIDENTIAL – SOURCE CODE.”
2.17
3.

Receiving Party: a Party that receives Disclosure or Discovery Material.

SCOPE
The protections conferred by this Stipulation and Order cover not only Protected Material (as

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defined above), but also (1) any information copied or extracted from Protected Material; (2) all copies,
excerpts, summaries, or compilations of Protected Material; and (3) any testimony, conversations, or
presentations by Parties or their Counsel that might reveal Protected Material. However, the protections
conferred by this Stipulation and Order do not cover the following information: (a) any information that is
in the public domain at the time of disclosure to a Receiving Party or becomes part of the public domain
after its disclosure to a Receiving Party as a result of publication not involving a violation of this Order,
including becoming part of the public record through trial or otherwise; and (b) any information known to
the Receiving Party prior to the disclosure or obtained by the Receiving Party after the disclosure from a
source who obtained the information lawfully and under no obligation of confidentiality to the
Designating Party. Any use of Protected Material at trial shall be governed by a separate agreement or
order.
4.

DURATION
Even after final disposition of this litigation, the confidentiality obligations imposed by this Order

shall remain in effect until a Designating Party agrees otherwise in writing or a Court order otherwise
directs. Final disposition shall be deemed to be the later of (1) dismissal of all claims and defenses in this
action, with or without prejudice; or (2) entry of a final judgment herein after the completion and
exhaustion of all appeals, rehearings, remands, trials, or reviews of this action, including the time limits
for filing any motions or applications for extension of time pursuant to applicable law.
5.

DESIGNATING PROTECTED MATERIAL
5.1

Exercise of Restraint and Care in Designating Material for Protection. Each Party or Non-

Party that designates information or items for protection under this Order must take care to limit any such
designation to specific material that qualifies under the appropriate standards. To the extent it is practical
to do so, the Designating Party must designate for protection only those parts of material, documents,
items, or oral or written communications that qualify – so that other portions of the material, documents,
items, or communications for which protection is not warranted are not swept unjustifiably within the

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ambit of this Order.
Mass, indiscriminate, or routinized designations are prohibited. Designations that are shown to be
clearly unjustified or that have been made for an improper purpose (e.g., to unnecessarily encumber or
retard the case development process or to impose unnecessary expenses and burdens on other Parties)
expose the Designating Party to sanctions.
If it comes to a Designating Party’s attention that information or items that it designated for
protection do not qualify for protection at all or do not qualify for the level of protection initially asserted,
that Designating Party must promptly notify all other Parties that it is withdrawing the mistaken
designation.
5.2

Manner and Timing of Designations. Except as otherwise provided in this Order (see,

e.g., second paragraph of section 5.2(a) below), or as otherwise stipulated or ordered, Disclosure or
Discovery Material that qualifies for protection under this Order must be clearly so designated before the
material is disclosed or produced.
Designation in conformity with this Order requires:
(a) for information in documentary form (e.g., paper or electronic documents, but
excluding transcripts of depositions or other pretrial or trial proceedings), that the Producing Party affix
the legend “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or
“HIGHLY CONFIDENTIAL – SOURCE CODE” to each page that contains protected material.
A Party or Non-Party that makes original documents or materials available for inspection need
not designate them for protection until after the inspecting Party has indicated which material it would
like copied and produced. During the inspection and before the designation, all of the material made
available for inspection shall be deemed “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.”
After the inspecting Party has identified the documents it wants copied and produced, the Producing Party
must determine which documents, or portions thereof, qualify for protection under this Order. Then,
before producing the specified documents, the Producing Party must affix the appropriate legend

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(“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY
CONFIDENTIAL – SOURCE CODE”) to each page that contains Protected Material.
(b) for testimony given in deposition or in other pretrial or trial proceedings, that the
Designating Party when practical identify on the record, before the close of the deposition, hearing, or
other proceeding, all protected testimony and specify the level of protection being asserted. When it is
impractical to identify separately each portion of testimony that is entitled to protection and it appears that
substantial portions of the testimony may qualify for protection, the Designating Party may invoke a right
to have up to 21 days to identify the specific portions of the testimony as to which protection is sought
and to specify the level of protection being asserted. Only those portions of the testimony that are
appropriately designated for protection within the 21 days shall be covered by the provisions of this
Stipulated Protective Order. Alternatively, a Designating Party may specify, at the deposition or up to 21
days afterwards, that the entire transcript shall be treated as “CONFIDENTIAL” or “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE
CODE.”
Parties shall give the other Parties reasonable notice (a minimum of two business days) if they
reasonably expect a deposition, hearing or other proceeding to include Protected Material so that the other
Parties can ensure that only authorized individuals who have signed the “Acknowledgment and
Agreement to Be Bound” (Exhibit A) are present at those proceedings. For the avoidance of doubt, this
notice does not require identification of the specific documents or exhibits constituting Protected Material
to be used at the deposition, hearing, or other proceeding. The use of a document as an exhibit at a
deposition shall not in any way affect its designation as “CONFIDENTIAL” or “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE
CODE.”
Transcripts containing Protected Material shall have an obvious legend on the title page that the
transcript contains Protected Material. The Designating Party shall inform the court reporter of this

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requirement. Any transcript that is prepared before the expiration of a 21-day period for designation shall
be treated during that period as if it had been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’
EYES ONLY” in its entirety unless otherwise agreed. After the expiration of that period, the transcript
shall be treated only as actually designated.
(c) for information produced in some form other than documentary and for any other
tangible items, that the Producing Party affix in a prominent place on the exterior of the container or
containers in which the information or item is stored the legend “CONFIDENTIAL” or “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE
CODE”. If only a portion or portions of the information or item warrant protection, the Producing Party,
to the extent practicable, shall identify the protected portion(s) and specify the level of protection being
asserted.
5.3

Inadvertent Failures to Designate. If timely corrected, an inadvertent failure to designate

qualified information or items does not, standing alone, waive the Designating Party’s right to secure
protection under this Order for such material. Upon timely correction of a designation, the Receiving
Party must make reasonable efforts to ensure that the material is treated in accordance with the provisions
of this Order.
6.

CHALLENGING CONFIDENTIALITY DESIGNATIONS
6.1

Timing of Challenges. Any Party may challenge a designation of confidentiality at any

time. Unless a prompt challenge to a Designating Party’s confidentiality designation is necessary to avoid
foreseeable, substantial unfairness, unnecessary economic burdens, or a significant disruption or delay of
the litigation, a Party does not waive its right to challenge a confidentiality designation by electing not to
mount a challenge promptly after the original designation is disclosed.
6.2

Meet and Confer. The Challenging Party shall initiate the dispute resolution process by

providing written notice of each designation it is challenging and describing the basis for each challenge.
To avoid ambiguity as to whether a challenge has been made, the written notice must recite that the

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challenge to confidentiality is being made in accordance with this specific paragraph of the Protective
Order. The Parties shall attempt to resolve each challenge in good faith and must begin the process by
conferring directly (in voice to voice dialogue; other forms of communication are not sufficient) within 14
days of the date of service of notice. In conferring, the Challenging Party must explain the basis for its
belief that the confidentiality designation was not proper and must give the Designating Party an
opportunity to review the designated material, to reconsider the circumstances, and, if no change in
designation is offered, to explain the basis for the chosen designation. A Challenging Party may proceed
to the next stage of the challenge process only if it has engaged in this meet and confer process first or
establishes that the Designating Party is unwilling to participate in the meet and confer process in a timely
manner.
6.3

Judicial Intervention. If the Parties cannot resolve a challenge without Court intervention,

the Challenging Party shall file and serve a motion to re-designate or de-designate using the procedure
described in Individual Rules II.B and III.C.3 (and in compliance with Individual l Rule I.D, if applicable)
within 21 days of the initial notice of challenge or within 14 days of the Parties agreeing that the meet and
confer process will not resolve their dispute, whichever is earlier. Each such motion must be accompanied
by a competent declaration affirming that the movant has complied with the meet and confer requirements
imposed in the preceding paragraph.
The burden of persuasion in any such challenge proceeding shall be on the Designating Party.
Frivolous challenges and those made for an improper purpose (e.g., to harass or impose unnecessary
expenses and burdens on other Parties) may expose the Challenging Party to sanctions. All Parties shall
continue to afford the material in question the level of protection to which it is entitled under the
Designating Party’s designation until the Court rules on the challenge.
7.

ACCESS TO AND USE OF PROTECTED MATERIAL
7.1

Basic Principles. A Receiving Party may use Protected Material that is disclosed or

produced by another Party or by a Non-Party in connection with this case only for prosecuting, defending,

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or attempting to settle this litigation, and such Protected Material shall not be used for any business
purpose, in connection with any other legal proceeding, or directly or indirectly for any other purpose
whatsoever. Such Protected Material may be disclosed only to the categories of persons and under the
conditions described in this Order.1 When the litigation has been terminated, a Receiving Party must
comply with the provisions of section 15 below (FINAL DISPOSITION).
Protected Material must be stored and maintained by a Receiving Party at a location and in a
secure manner that ensures that access is limited to the persons authorized under this Order. Protected
Material shall not be copied or otherwise reproduced by a Receiving party, except as consistent with this
Protective Order and any amendments thereto, or by further order of the Court.
7.2

Disclosure of “CONFIDENTIAL” Information or Items. Unless otherwise ordered by the

Court or permitted in writing by the Designating Party, a Receiving Party may disclose any information
or item designated “CONFIDENTIAL” only to:
(a) the Receiving Party’s Outside Counsel of Record in this action, as well as employees
of said Outside Counsel of Record to whom it is reasonably necessary to disclose the information for this
litigation and who have signed the “Acknowledgment and Agreement to Be Bound” that is attached
hereto as Exhibit A;
(b) up to one House Counsel of the Receiving Party to whom disclosure is reasonably
necessary for this litigation and who has signed the “Acknowledgment and Agreement to Be Bound”
(Exhibit A);
(c) Experts (as defined in this Order) of the Receiving Party to whom disclosure is
reasonably necessary for this litigation and who have signed the “Acknowledgment and Agreement to Be
1

In the event a Non-Party witness is authorized to receive Protected Material that is to be used during his/her
deposition but is represented by an attorney not authorized under this Order to receive such Protected Material, the
attorney must provide prior to commencement of the deposition an executed “Acknowledgment and Agreement to
Be Bound” in the form attached hereto as Exhibit A. In the event such attorney declines to sign the
“Acknowledgment and Agreement to Be Bound” prior to the examination, the Parties, by their attorneys, shall
jointly seek a protective order from the Court prohibiting the attorney from disclosing Protected Material in order for
the deposition to proceed. Alternatively, the Designating Party may consent to disclosure of material that it has
designated as Protected Material to an attorney representing the Non-Party witness.

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Bound” (Exhibit A);
(d) the Court and its personnel;
(e) stenographic reporters, videographers and/or their staff, and Professional Vendors to
whom disclosure is reasonably necessary for this litigation and who have signed the “Acknowledgment
and Agreement to Be Bound” (Exhibit A);
(f) during their depositions, witnesses in the action to whom disclosure is reasonably
necessary and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), unless
the Designating Party objects to such disclosure or except as otherwise ordered by the Court. Before
making such a disclosure, Receiving Party must provide notice sufficient to allow the Designating Party
to object. Such objection shall not conflict with disclosures permitted under paragraph 7.2(g). Pages of
transcribed deposition testimony or exhibits to depositions that reveal Protected Material must be
separately bound by the court reporter and may not be disclosed to anyone except as permitted under this
Stipulated Protective Order.
(g) the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or personally knows the information.
(h) mock jurors to whom disclosure is reasonably necessary for this litigation and who
have signed the “Acknowledgement and Agreement to Be Bond” (Exhibit A).
7.3

Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” Information

or Items. Unless otherwise ordered by the Court or permitted in writing by the Designating Party, a
Receiving Party may disclose any information or item designated “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” only to:
(a) the Receiving Party’s Outside Counsel of Record in this action, as well as employees
of said Outside Counsel of Record to whom it is reasonably necessary to disclose the information for this
litigation and who have signed the “Acknowledgment and Agreement to Be Bound” that is attached
hereto as Exhibit A;

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(c) Experts of the Receiving Party (1) to whom disclosure is reasonably necessary for
this litigation, (2) who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and
(3) as to whom the procedures set forth in paragraph 7.5(a)(1), below, have been followed;
(d) the Court and its personnel;
(e) stenographic reporters, videographers and their respective staff, professional jury or
trial consultants, and Professional Vendors to whom disclosure is reasonably necessary for this litigation
and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A); and
(f) the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or knew the information.
The parties have discussed and agree that should a formal mediation or settlement
conference be scheduled, it may be appropriate to agree to a limited disclosure of financial information
designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” to Designated House Counsel,
provided that individual has signed the “Acknowledgment and Agreement to be Bound” (Exhibit A). The
parties agree to negotiate whether such disclosure is appropriate and the scope of such disclosure in good
faith prior to the date of the scheduled mediation or settlement conference.
7.4

Disclosure of “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items.

Unless otherwise ordered by the Court or permitted in writing by the Designating Party, a Receiving Party
may disclose any information or item designated “HIGHLY CONFIDENTIAL – SOURCE CODE” only
to:
(a) the Receiving Party’s Outside Counsel of Record in this action, as well as employees
of said Outside Counsel of Record to whom it is reasonably necessary to disclose the information for this
litigation and who have signed the “Acknowledgment and Agreement to Be Bound” that is attached
hereto as Exhibit A;
(b) up to three Experts (for the avoidance of doubt, the Parties can agree to allow such
disclosure to more than three Experts of the Receiving Party) of the Receiving Party (1) to whom

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disclosure is reasonably necessary for this litigation, (2) who have signed the “Acknowledgment and
Agreement to Be Bound” (Exhibit A), and (3) as to whom the procedures set forth in paragraph 7.5(a)(2),
below and specifically identified as eligible to access “HIGHLY CONFIDENTIAL – SOURCE CODE”
Information or Items, have been followed;
(c) the Court and its personnel;
(d) stenographic reporters, videographers and their respective staff who have signed the
“Acknowledgment and Agreement to Be Bound” (Exhibit A) and are transcribing or videotaping a
deposition wherein “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items are being
discussed, provided that such reporters and videographers shall not retain or be given copies of any
portions of the source code, which if used during a deposition, will not be attached as an exhibit to the
transcript but instead shall be identified only by its production numbers.
(e) while testifying at deposition or trial in this action only: (i) any current officer,
director or employee of the Producing Party or original source of the information; (ii) any person
designated by the Producing Party to provide testimony pursuant to Rule 30(b)(6) of the Federal Rules of
Civil Procedure; and/or (iii) any person who authored, previously received (other than in connection with
this litigation), or was directly involved in creating, modifying, or editing the “HIGHLY
CONFIDENTIAL – SOURCE CODE” Information or Items, as evident from its face or reasonably
certain in view of other testimony or evidence. Persons authorized to view “HIGHLY CONFIDENTIAL
– SOURCE CODE” Information or Items pursuant to this sub-paragraph shall not retain or be given
copies of the “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items except while so
testifying.
7.5 Procedures for Approving or Objecting to Disclosure of “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or
Items to Experts.
(a)(1) Unless otherwise ordered by the court or agreed to in writing by the Designating

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Party, a Party that seeks to disclose to an Expert (as defined in this Order) any information or item that
has been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY
CONFIDENTIAL – SOURCE CODE” pursuant to paragraphs 7.3(c) and 7.4(b) first must make a written
request to the Designating Party2 that (1) identifies the general categories of “HIGHLY CONFIDENTIAL
– ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” information that
the Receiving Party seeks permission to disclose to the Expert, (2) sets forth the full name of the Expert
and the city and state of his or her primary residence, (3) attaches a copy of the Expert’s current resume,
(4) identifies the Expert’s current employer(s), (5) identifies each person or entity from whom the Expert
has received compensation or funding for work in his or her areas of expertise or to whom the expert has
provided professional services, including in connection with a litigation, at any time during the preceding
3

five years, and (6) identifies (by name and number of the case, filing date, and location of court) any
litigation in connection with which the Expert has offered expert testimony, including through a
declaration, report, or testimony at a deposition or trial, during the preceding five years.
(b) A Party that makes a request and provides the information specified in the preceding
respective paragraphs may disclose the subject Protected Material to the identified Expert unless, within
14 days of delivering the request, the Party receives a written objection from the Designating Party. Any
such objection must set forth in detail the grounds on which it is based.
(c) A Party that receives a timely written objection must meet and confer with the
Designating Party (through direct voice to voice dialogue) to try to resolve the matter by agreement
2

For a Designating Party that is a Non-Party, experts previously disclosed and approved prior to the Non-Party’s
production of any information or item that has been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’
EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” need not be disclosed to said Non-Party unless
such Non-Party requests such information prior to the production of any Protected Material. Moreover, unless
otherwise requested by the Non-Party, subsequently disclosed experts need not be disclosed to the Non-Party before
that Non-Party’s Protected Material may be disclosed thereto.
3

If the Expert believes any of this information is subject to a confidentiality obligation to a third-party, then the
Expert should provide whatever information the Expert believes can be disclosed without violating any
confidentiality agreements, and the Party seeking to disclose to the Expert shall be available to meet and confer with
the Designating Party regarding any such engagement.

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within seven days of the written objection. If no agreement is reached, the Party seeking to make the
disclosure to the Expert may file a motion using the procedure described in Individual Rules II.B and
III.C.3 (and in compliance with Individual Local Rule I.D, if applicable) seeking permission from the
Court to do so. Any such motion must describe the circumstances with specificity, set forth in detail the
reasons why the disclosure to the Expert is reasonably necessary, assess the risk of harm that the
disclosure would entail, and suggest any additional means that could be used to reduce that risk. In
addition, any such motion must be accompanied by a competent declaration describing the parties’ efforts
to resolve the matter by agreement (i.e., the extent and the content of the meet and confer discussions) and
setting forth the reasons advanced by the Designating Party for its refusal to approve the disclosure.
(d) In any such proceeding, the Party opposing disclosure to the Expert shall bear the burden of
proving that the risk of harm that the disclosure would entail (under the safeguards proposed) outweighs
the Receiving Party’s need to disclose the Protected Material to its Expert.
8.

PROSECUTION AND ACQUISITION BAR
(a) Absent written consent from the Producing Party, any individual who receives access to

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” information (other than financial information) shall not be involved in the prosecution
of patents or patent applications relating to the subject matter of this action, including without limitation
the patents asserted in this action and any patent or application claiming priority to or otherwise related to
the patents asserted in this action, before any foreign or domestic agency, including the United States
Patent and Trademark Office (“the Patent Office”). For purposes of this paragraph, “prosecution” means
directly or indirectly drafting, amending, or advising others as to the drafting or amending of patent
claims.4 To avoid any doubt, “prosecution” as used in this paragraph does not include representing a party
challenging or defending a patent before a domestic or foreign agency (including, but not limited to, a

4

Prosecution includes, for example, original prosecution, reissue, and reexamination proceedings.

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reissue protest, ex parte reexamination, inter partes reexamination, inter partes review, post grant review
or covered business method review). To avoid any doubt, counsel of record in this action shall not be
prohibited from serving as counsel for Kewazinga in any inter partes review proceeding involving any of
U.S. Patent Nos. 9,055,234, 6,522,325, or 6,535,226. This Prosecution Bar shall begin when access to
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” information (other than financial information) is first received by the affected
individual and shall end for the affected individual two (2) years after final termination of this action.

(b) Absent written consent from Google LLC, any individual who receives access to “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”
information designated by Google LLC (other than financial information) shall not (i) participate in the
acquisition of patents or patent applications relating to the subject matter of this action for the purposes of
assertion against Google LLC; or (ii) advise or counsel clients regarding the same. For the avoidance of
doubt, this Acquisition Bar does not prohibit any individual from representing, advising, or counseling
Kewazinga Corp. in the sale or licensing of U.S. Patent Nos. 6,535,226, 6,522,325, and 9,055,234 (the
“Asserted Patents”). In addition, this Acquisition Bar shall not prohibit counsel from advising clients on
other legal matters involving patents, including validity and settlement negotiations. This Acquisition Bar
shall begin when access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY
CONFIDENTIAL – SOURCE CODE” information is first received by the affected individual and shall
end two (2) years after final termination of this action.
9.

SOURCE CODE
The parties expect that production of source code will be necessary in this case and agree

to meet and confer in good faith to determine appropriate provisions to adequately protect a party’s
confidential, proprietary or trade secret source code or algorithms. The parties agree to submit by June 24,
2020 a proposed amendment to this stipulated protective order to address source code.

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10

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN OTHER
LITIGATION
If a Party is served with a subpoena issued by a court, arbitral, administrative, or

legislative body, or with a court order issued in other litigation that compels disclosure of any information
or items designated in this action as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” that Party must:
(a) promptly notify in writing the Designating Party. Such notification shall include a
copy of the subpoena or court order;
(b) promptly notify in writing the person who caused the subpoena or order to issue in the
other litigation that some or all of the material covered by the subpoena or order is subject to this
Protective Order. Such notification shall include a copy of this Stipulated Protective Order; and
(c) cooperate with respect to all reasonable procedures sought to be pursued by the
5

Designating Party whose Protected Material may be affected.

If the Designating Party timely6 seeks a protective order, the Party served with the
subpoena or court order shall not produce any information designated in this action as
“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY
CONFIDENTIAL – SOURCE CODE” before a determination by the court from which the subpoena or
order issued, unless the Party has obtained the Designating Party’s permission. The Designating Party
shall bear the burden and expense of seeking protection in that court of its confidential material – and
nothing in these provisions should be construed as authorizing or encouraging a Receiving Party in this
action to disobey a lawful directive from another court.

5

The purpose of imposing these duties is to alert the interested parties to the existence of this Protective Order and
to afford the Designating Party in this case an opportunity to try to protect its confidentiality interests in the court
from which the subpoena or order issued.
6
The Designating Party shall have at least 14 days from the service of the notification pursuant to Section 10(a) to
seek a protective order.

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11.

A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE PRODUCED IN THIS
LITIGATION
(a)

The terms of this Order are applicable to information produced by a Non-Party in

this action and designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’
EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”. Such information produced by NonParties in connection with this litigation is protected by the remedies and relief provided by this Order.
Nothing in these provisions should be construed as prohibiting a Non-Party from seeking additional
protections.
(b)

In the event that a Party is required, by a valid discovery request, to produce a

Non-Party’s confidential information in its possession, and the Party is subject to an agreement with the
Non-Party not to produce the Non-Party’s confidential information, then the Party shall:
1. promptly notify in writing the Requesting Party and the Non-Party that some or
all of the information requested is subject to a confidentiality agreement with a Non-Party;
2. promptly provide the Non-Party with a copy of the Stipulated Protective Order in
this litigation, the relevant discovery request(s), and a reasonably specific description of the information
requested; and
3. make the information requested available for inspection by the Non-Party.
(c)

If the Non-Party fails to object or seek a protective order from this Court within

14 days of receiving the notice and accompanying information, the Receiving Party may produce the
Non-Party’s confidential information responsive to the discovery request. If the Non-Party timely objects
or seeks a protective order, the Receiving Party shall not produce any information in its possession or
control that is subject to the confidentiality agreement with the Non-Party before a determination by the
7

Court. Absent a Court order to the contrary, the Non-Party shall bear the burden and expense of seeking
protection in this court of its Protected Material.
7

The purpose of this provision is to alert the interested parties to the existence of confidentiality rights of a NonParty and to afford the Non-Party an opportunity to protect its confidentiality interests in this court.

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Case 1:20-cv-01106-LGS Document 42 Filed 05/05/20 Page 18 of 24

12.

UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL
If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed Protected

Material to any person or in any circumstance not authorized under this Stipulated Protective Order, the
Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized
disclosures, (b) use its best efforts to retrieve all unauthorized copies of the Protected Material, (c) inform
the person or persons to whom unauthorized disclosures were made of all the terms of this Order, and (d)
request such person or persons to execute the “Acknowledgment and Agreement to Be Bound” that is
attached hereto as Exhibit A.
13.

INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE PROTECTED
MATERIAL
When a Producing Party gives notice to Receiving Parties that certain produced material

is subject to a claim of privilege or other protection, the obligations of the Receiving Parties are those set
forth in Federal Rule of Civil Procedure 26(b)(5)(B). This provision is not intended to modify whatever
procedure may be established in an e-discovery order that provides for production without prior privilege
review. If information is produced in discovery that is subject to a claim of privilege or of protection as
trial-preparation material, the party making the claim may notify any party that received the information
of the claim and the basis for it. After being notified, the Receiving Party must promptly return or destroy
the specified information and any copies it has and may not sequester, use or disclose the information
until the claim is resolved. This includes a restriction against presenting the information to the court for a
determination of the claim. The Producing Party must promptly produce a privilege log identifying the
specified information identified above and the basis for the claim of privilege or other protection. The
Receiving Party may challenge the Producing Party’s claim of privilege or protection by informing the
Producing Party of its disagreement with the Producing Party’s claim within 14 days of notification. The
Producing Party must preserve the specified information until any claim is resolved. Pursuant to Federal
Rule of Evidence 502(d) and (e), the production of a privileged or work-product-protected document is

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not a waiver of privilege or protection from discovery in this case or in any other federal or state
proceeding. For example, the mere production of privileged or work-product-protected documents in this
case as part of a mass production is not itself a waiver in this case or any other federal or state proceeding.
14.

MISCELLANEOUS
14.1

Right to Further Relief. Nothing in this Order abridges the right of any person to seek its

modification by agreement with other Parties or by applying to the Court if such agreement cannot be
reached. Furthermore, without application to the Court, any party that is a beneficiary of the protections
of this Order may enter a written agreement releasing any other party hereto from one or more
requirements of this Order (only as it relates to the releasing party).
14.2

Right to Assert Other Objections. By stipulating to the entry of this Protective Order, no

Party waives any right it otherwise would have to object to disclosing or producing any information or
item on any ground not addressed in this Stipulated Protective Order. Similarly, no Party waives any right
to object on any ground to use in evidence of any of the material covered by this Protective Order.
14.3

No Agreement Concerning Discoverability. The identification or agreed upon treatment

of certain types of Disclosure and Discovery Material does not reflect agreement by the Parties that the
disclosure of such categories of Disclosure and Discovery Material is required or appropriate in this
action. The Parties reserve the right to argue that any particular category of Disclosure and Discovery
Material should not be produced.
14.4

Export Control. Disclosure of Protected Material shall be subject to all applicable laws

and regulations relating to the export of technical data contained in such Protected Material, including the
release of such technical data to foreign persons or nationals in the United States or elsewhere. Each party
receiving Protected Information shall comply with all applicable export control statutes and regulations.
See, e.g., 15 CFR 734.2(b). No Protected Information may leave the territorial boundaries of the United
States of America or be made available to any foreign national who is not (i) lawfully admitted for
permanent residence in the United States or (ii) identified as a protected individual under the Immigration

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Case 1:20-cv-01106-LGS Document 42 Filed 05/05/20 Page 20 of 24

and Naturalization Act (8 U.S.C. 1324b(a)(3)). Without limitation, this prohibition extends to Protected
Information (including copies) in physical and electronic form. The viewing of Protected Information
through electronic means outside the territorial limits of the United States of America is similarly
prohibited. Notwithstanding this prohibition, Protected Information, exclusive of material designated
RESTRICTED CONFIDENTIAL

SOURCE CODE, and to the extent otherwise permitted by law, may

be taken outside the territorial limits of the United States if it is reasonably necessary for a deposition
taken in a foreign country. The restrictions contained within this paragraph may be amended through the
consent of the producing Party to the extent that such agreed to procedures conform with applicable
export control laws and regulations.
14.5

Filing Protected Material. Without written permission from the Designating Party or a

Court order secured after appropriate notice to all interested persons, a Party may not file in the public
record in this action any Protected Material. A Party that seeks to file under seal any Protected Material
must comply with Individual Rule I.D. Protected Material may only be filed under seal pursuant to a
Court order authorizing the sealing of the specific Protected Material at issue. A sealing order will issue
only upon a request establishing that the Protected Material at issue is privileged, protectable as a trade
secret, or otherwise entitled to protection under the law. If a Receiving Party's request to file Protected
Material under seal is denied by the court, then the Receiving Party may file the Protected Material in the
public record unless otherwise instructed by the court.
14.6 Use of Protected Material at Hearing or Trial. A Party shall provide a minimum of two
business day's notice to the Producing Party in the event that a Party intends to use any Protected
Information during trial. This requirement is superseded by any schedules or agreements between the
Parties regarding exchanges of materials, information, or exhibits that may include Protected
Information. Subject to any challenges under Section 6, the Parties will not oppose any reasonable request
by the Producing Party that the courtroom be sealed, if allowed by the Court, during the presentation of
any testimony, evidence, or argument relating to or involving the use of any Protected Material.

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14.7 No Limitation on Legal Representation. Nothing in this Order shall preclude or impede
Outside Counsel of Record’s ability to communicate with or advise their client in connection with this
litigation based on such counsel’s review and evaluation of Protected Material, provided however that
such communications or advice shall not disclose or reveal the substance or content of any Protected
Material other than as permitted under this Order.
14.8 Violations. If any Party violates the limitations on the use of Protected Material as described
above, the Party violating this Order shall be subject to sanctions, or any other remedies as appropriate, as
ordered by the Court. In the event motion practice is required to enforce the terms of this Order, the
prevailing party on such a motion shall be awarded costs, expenses, and fees, including attorney or other
professional fees, incurred in connection with the discovery of the violation and the preparation, filing,
and arguing of the motion or any other proceedings resulting from the violation.
14.9 Agreement Upon Execution. Each of the Parties agrees to be bound by the terms of this
Stipulated Protective Order as of the date counsel for such party executes this Stipulated Protective Order,
even if prior to entry of this Order by the Court.
15.

FINAL DISPOSITION
Within 60 days after the final disposition of this action, as defined in paragraph 4, each

Receiving Party must return all Protected Material to the Producing Party or destroy such material. As
used in this subdivision, “all Protected Material” includes all copies, abstracts, compilations, summaries,
and any other format reproducing or capturing any of the Protected Material. Whether the Protected
Material is returned or destroyed, the Receiving Party must submit a written certification to the Producing
Party (and, if not the same person or entity, to the Designating Party) by the 60-day deadline that (1)
identifies (by category, where appropriate) all the Protected Material that was returned or destroyed and
(2) affirms that the Receiving Party has not retained any copies, abstracts, compilations, summaries or any
other format reproducing or capturing any of the Protected Material. Notwithstanding this provision,
Counsel are entitled to retain an archival copy of all pleadings, motions and trial briefs (including all

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Case 1:20-cv-01106-LGS Document 42 Filed 05/05/20 Page 22 of 24

supporting and opposing papers and exhibits thereto), written discovery requests and responses (and
exhibits thereto), deposition transcripts (and exhibits thereto), trial transcripts, and exhibits offered or
introduced into evidence at any hearing or trial, and their attorney work product which refers or is related
to any of the Protected Material. Any such archival copies that contain or constitute Protected Material
remain subject to this Protective Order as set forth in Section 4 (DURATION).
16. INTERPRETATION, ENFORCEMENT, AND CONTINUING JURISDICTION
The United States District Court for the Southern District of New York is responsible for the
interpretation and enforcement of this Order. After final disposition of this litigation, the provisions of
this Order shall continue to be binding except with respect to that Disclosure or Discovery Material that
become a matter of public record. This Court retains and shall have continuing jurisdiction over the
Parties and recipients of the Protected Material for enforcement of the provision of this Order following
final disposition of this litigation. All disputes concerning Protected Material produced under the
protection of this Order shall be resolved by the United States District Court for the Southern District of
New York.
IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.
So Ordered.
The parties are advised that the Court retains discretion as to whether to afford confidential treatment
to redacted information in Orders and Opinions.
Dated: May 5, 2020
New York, New York

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Case 1:20-cv-01106-LGS Document 42 Filed 05/05/20 Page 23 of 24
Dated: May 1, 2020

Dated: May 1, 2020

/s/ Ian G. DiBernardo
Ian G. DiBernardo
Timothy K. Gilman
Kenneth L. Stein
Saunak K. Desai
Gregory R. Springsted
STROOCK & STROOCK & LAVAN LLP

/s/ Elizabeth Weyl
John M. Desmarais
Ameet A. Modi
Steven M. Balcof
Elizabeth Weyl
DESMARAIS LLP
230 Park Avenue

180 Maiden Lane
New York, NY 10038
Tel: [phone]
Fax: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]

New York, New York 10169
T: 212-351-3400
F: 212-351-3401
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Counsel for Plaintiff Kewazinga Corp.

Emily H. Chen (pro hac vice)
DESMARAIS LLP
101 California Street
San Francisco, California 94111
T: [phone]
F: [phone]
[e-mail]
Counsel for Defendant Google LLC

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Case 1:20-cv-01106-LGS Document 42 Filed 05/05/20 Page 24 of 24

EXHIBIT A
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND
I,

_____________________________

[print

or

type

full

name],

of

_________________ [print or type full address], declare under penalty of perjury that I have
read in its entirety and understand the Stipulated Protective Order that was issued by the United
States District Court for the Southern District of New York on ____________[date] in the case
of Kewazinga Corp. v. Google LLC, No. 1:20-cv-1106-LGS. I agree to comply with and to be
bound by all the terms of this Stipulated Protective Order and I understand and acknowledge that
failure to so comply could expose me to sanctions and punishment in the nature of contempt. I
solemnly promise that I will not disclose in any manner any information or item that is subject to
this Stipulated Protective Order to any person or entity except in strict compliance with the
provisions of this Order.
I further agree to submit to the jurisdiction of the United States District Court for
the Southern District of New York for the purpose of enforcing the terms of this Stipulated
Protective Order, even if such enforcement proceedings occur after termination of this action.
I hereby appoint __________________________ [print or type full name] of
_______________________________________ [print or type full address and telephone
number] as my New York agent for service of process in connection with this action or any
proceedings related to enforcement of this Stipulated Protective Order.
Date: _________________________________
City and State where sworn and signed: _________________________________
Printed name: ______________________________
[printed name]
Signature: __________________________________
[signature]

24