Ohanian et al v. Apple Inc. et al

Filing 106

AGREED PROTECTIVE ORDER REGARDING THE DISCLOSURE AND USE OF DISCOVERY MATERIALS...regarding procedures to be followed that shall govern the handling of confidential material... (Signed by Judge Lorna G. Schofield on 11/16/2021) (mml)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
TIGRAN OHANIAN and REGGE LOPEZ,
individually and on behalf of all other persons
similarly situated,
Plaintiffs,

Civil Action No. 1:20-cv-05162

v.
APPLE INC. and T-MOBILE USA, INC.,
Defendants.

AGREED PROTECTIVE ORDER
REGARDING THE DISCLOSURE AND USE OF DISCOVERY MATERIALS
Plaintiffs Tigran Ohanian and Regge Lopez (“Plaintiffs”) and Defendants Apple
Inc. and T-Mobile USA, Inc. (“Defendants”) anticipate that documents, testimony, or
information containing or reflecting confidential, personal, proprietary, trade secret, and/or
commercially sensitive information are likely to be disclosed or produced during the course
of discovery, initial disclosures, and supplemental disclosures in this case and request that
the Court enter this Order setting forth the conditions for treating, obtaining, and using such
information.
Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, the Court finds
good cause for the following Agreed Protective Order Regarding the Disclosure and Use of
Discovery Materials (“Order” or “Protective Order”).
1.

PURPOSES AND LIMITATIONS
(a)

Protected Material designated under the terms of this Protective Order

shall be used by a Receiving Party solely for this case, and shall not be used directly or indirectly

for any other purpose whatsoever, including without limitation any other litigation, patent
prosecution or acquisition, patent reexamination or reissue proceedings, or any business or
competitive purpose or function. Protected Material shall not be distributed, disclosed or made
available to anyone except as expressly provided in this Order.
(b)

The Parties acknowledge that this Order does not confer blanket

protections on all disclosures during discovery, or in the course of making initial or supplemental
disclosures under Rule 26(a). Designations under this Order shall be made with care and shall
not be made absent a good faith belief that the designated material satisfies the criteria set forth
below. If it comes to a Producing Party’s attention that designated material does not qualify for
protection at all, or does not qualify for the level of protection initially asserted, the Producing
Party must promptly notify all other Parties that it is withdrawing or changing the designation.
The mass or indiscriminate designation of documents as “CONFIDENTIAL” to impair or delay
the discovery process is expressly prohibited. The fact that multiple documents may be
designated “CONFIDENTIAL” or “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” shall
not, by itself, be a basis for concluding that the documents were so designated to impair or delay
discovery.
(c)

The Parties agree that this Order does not address the production of source

code (including source and source code listings, object code and object code listings, executable
code, and similar sensitive software code, whether in print or electronic form). Before any Party
requests such source code, the Party making that request shall provide notice to all other
Parties. Upon receipt of such notice, the Parties agree to collectively negotiate in good faith a
protective order governing the production of source code.

2.

DEFINITIONS
(a)

“Discovery Material” means all items or information, including from any

non-party, regardless of the medium or manner generated, stored, or maintained (including,
among other things, testimony, transcripts, or tangible things) that are produced, disclosed, or
generated in connection with discovery or Rule 26(a) disclosures in this case.
(b)

“Outside Counsel” means (i) outside counsel who appear on the pleadings

as counsel for a Party and (ii) partners, associates, and staff of such counsel to whom it is
reasonably necessary to disclose the information for this litigation.
(c)

“Party” means any party to this case, including all of its officers,

directors, employees, consultants, retained experts, and outside counsel and their support staffs.
(d)

“Producing Party” means any Party or non-party that discloses or produces

any Discovery Material in this case.
(e)

“Protected Material” means any Discovery Material that is designated as

“CONFIDENTIAL” or “CONFIDENTIAL - ATTORNEYS’ EYES ONLY,” as provided for in
this Order. Protected Material shall not include: (i) materials that have been actually published
or publicly disseminated; (ii) materials that show on their face they have been disseminated to
the public.
(f)

“Receiving Party” means any Party who receives Discovery Material from

a Producing Party.
3.

COMPUTATION OF TIME
The computation of any period of time prescribed or allowed by this Order shall

be governed by the provisions for computing time set forth in Federal Rules of Civil
Procedure 6.

4.

SCOPE
(a)

The protections conferred by this Order cover not only Discovery Material

governed by this Order as addressed herein, but also any information copied or extracted
therefrom, as well as all copies, excerpts, summaries, or compilations thereof, plus testimony,
conversations, or presentations by Parties or their counsel in court or in other settings that might
reveal Protected Material.
(b)

Nothing in this Protective Order shall prevent or restrict a Producing

Party’s own disclosure or use of its own Protected Material for any purpose, and nothing in this
Order shall preclude any Producing Party from showing its Protected Material to an individual
who prepared the Protected Material.
(c)

Nothing in this Order shall be construed to prejudice any Party’s right to

use any Protected Material in court or in any court filing, provided it is filed under seal or
marked as confidential in the transcript of any hearing or proceeding.
(d)

This Order is without prejudice to the right of any Party to seek further or

additional protection of any Discovery Material or to modify this Order in any way, including,
without limitation, an order that certain matter not be produced at all.
5.

DURATION
Even after the termination of this case, the confidentiality obligations imposed by

this Order shall remain in effect until a Producing Party agrees otherwise in writing or a court
order otherwise directs.
6.

ACCESS TO AND USE OF PROTECTED MATERIAL
(a)

Patent Prosecution Bar. Absent the written consent of the Producing

Party, any person on behalf of the Plaintiffs who receives one or more items designated

“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” by a Defendant shall not be involved,
directly or indirectly, in any of the following activities: (i) advising on, consulting on, preparing,
prosecuting, drafting, editing, and/or amending of patent applications, specifications, claims,
and/or responses to office actions, or otherwise affecting the scope of claims in patents or patent
applications relating to the functionality, operation, and design of iMessage, FaceTime, and
Apple ID authentication (generally or as described in any patent in suit), before any foreign or
domestic agency, including the United States Patent and Trademark Office; and (ii) the
acquisition of patents (including patent applications), or the rights to any such patents or patent
applications with the right to sublicense, relating to the functionality, operation, and design of
iMessage, FaceTime, and Apple ID authentication. These prohibitions are not intended to and
shall not preclude counsel from participating in proceedings on behalf of a Party challenging the
validity of any patent, but are intended, inter alia, to preclude counsel from participating directly
or indirectly in reexamination, inter partes review, covered business method review, or reissue
proceedings on behalf of a patentee.

These prohibitions shall begin when access to

“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” materials are first received by the affected
individual, and shall end two (2) years after the final resolution of this action, including all
appeals.
(b)

Secure Storage, No Export. Protected Material must be stored and maintained by

a Receiving Party at a location in the United States and in a secure manner that ensures that
access is limited to the persons authorized under this Order.

To ensure compliance with

applicable United States Export Administration Regulations, Protected Material may not be
exported outside the United States or released to any foreign national (even if within the United
States). Counsel may share Protected Material with Parties outside of the United States to whom

disclosure is otherwise permitted in Paragraphs 8 and 9 below via screen-share only, provided
that the at person with whom the Protected Material is shared will not screenshot, download,
photograph, or otherwise copy or transmit the Protected Material shared on the screen.
(c)

Legal Advice Based on Protected Material. Nothing in this Protective

Order shall be construed to prevent counsel from advising their clients with respect to this case
based in whole or in part upon Protected Materials, provided counsel does not disclose the
Protected Material itself except as provided in this Order.
(d)

Limitations. Nothing in this Order shall restrict in any way a Producing

Party’s use or disclosure of its own Protected Material. Nothing in this Order shall restrict in any
way the use or disclosure of Discovery Material by a Receiving Party: (i) that is or has become
publicly known through no fault of the Receiving Party; (ii) that is lawfully acquired by or
known to the Receiving Party independent of the Producing Party; (iii) previously produced,
disclosed and/or provided by the Producing Party to the Receiving Party or a non-party without
an obligation of confidentiality and not by inadvertence or mistake; (iv) with the consent of the
Producing Party; or (v) pursuant to order of the Court.
7.

DESIGNATING PROTECTED MATERIAL
(a)

Available Designations. Any Producing Party may designate Discovery

Material with any of the following designations, provided that it meets the requirements for such
designations

as

provided

for

herein:

“CONFIDENTIAL,”

or

“CONFIDENTIAL

-

ATTORNEYS’ EYES ONLY.”
(b)

Written Discovery and Documents and Tangible Things.

Written

discovery, documents (which include “electronically stored information,” as that phrase is used
in Federal Rule of Procedure 34), and tangible things that meet the requirements for the

confidentiality designations listed in Paragraph 7(a) may be so designated by placing the
appropriate designation on every page of the written material prior to production in a manner that
will not interfere with the legibility of the material. For digital files being produced, the
Producing Party may mark each viewable page or image with the appropriate designation, and
mark the medium, container, and/or communication in which the digital files were contained. In
the event that original documents are produced for inspection, they shall be served with a coverpage indicating whether they are being designated as “CONFIDENTIAL” or “CONFIDENTIAL
– ATTORNEYS’ EYES ONLY”.
(c)

Native Files. Where electronic files and documents are produced in native

electronic format, such electronic files and documents shall be designated for protection under
this Order by appending to the file names or designators information indicating whether the file
contains “CONFIDENTIAL,” or “CONFIDENTIAL - ATTORNEYS’ EYES ONLY” material,
or shall use any other reasonable method for so designating Protected Materials produced in
electronic format. When electronic files or documents are printed for use at deposition, in a court
proceeding, or for provision in printed form to an expert or consultant pre-approved pursuant to
paragraph 10, the party printing the electronic files or documents shall affix a legend to the
printed document corresponding to the designation of the Designating Party and including the
production number and designation associated with the native file. No one shall seek to use in
this litigation a .tiff, .pdf or other image format version of a document produced in native file
format without first (1) providing a copy of the image format version to the Producing Party so
that the Producing Party can review the image to ensure that no information has been altered, and
(2) obtaining the consent of the Producing Party, which consent shall not be unreasonably
withheld.

(d)

Depositions and Testimony. Parties or testifying persons or entities may

designate the appropriate portions of depositions and other testimony with the appropriate
designation by indicating on the record at the time the testimony is given or by sending written
fourteen (14)
notice of how portions of the transcript of the testimony is designated within thirty (30) days of
receipt of the transcript of the testimony. If no indication on the record is made, all information
disclosed during a deposition shall be deemed “CONFIDENTIAL – ATTORNEYS’ EYES
ONLY” until the time within which it may be appropriately designated as provided for herein
has passed. Any Party that wishes to disclose the transcript, or information contained therein,
may provide written notice of its intent to treat the transcript as non-confidential, after which
time, any Party that wants to maintain any portion of the transcript as confidential must designate
the confidential portions within fourteen (14) days, or else the transcript may be treated as nonconfidential. Any Protected Material that is used in the taking of a deposition shall remain
subject to the provisions of this Protective Order, along with the transcript pages of the deposition
testimony dealing with such Protected Material.

In such cases the court reporter shall be

informed of this Protective Order and shall be required to operate in a manner consistent with
this Protective Order. In the event the deposition is videotaped, the original and all copies of the
videotape shall be marked by the video technician to indicate that the contents of the videotape
are subject to this Protective Order, substantially along the lines of “This videotape contains
confidential testimony used in this case and is not to be viewed or the contents thereof to be
displayed or revealed except pursuant to the terms of the operative Protective Order in this
matter or pursuant to written stipulation of the parties.” Counsel for any Producing Party
shall have the right to exclude from oral depositions, other than the deponent, deponent’s
counsel, the reporter and videographer (if any), any person who is not authorized by this

Protective Order to receive or access Protected Material based on the designation of such
Protected Material.

Such right of exclusion shall be applicable only during periods of

examination or testimony regarding such Protected Material.
8.

DISCOVERY MATERIAL DESIGNATED AS “CONFIDENTIAL”
(a)

A

Producing

Party

may

designate

Discovery

Material

as

“CONFIDENTIAL” if it contains or reflects confidential, personal, proprietary, and/or
commercially sensitive information.
(b)

Unless otherwise ordered by the Court, Discovery Material designated as

“CONFIDENTIAL” may be disclosed only to the following:
(i)

Plaintiffs Tigran Ohanian and Regge Lopez and their counsel;

(ii)

Defendant Apple’s and Defendant T-Mobile’s Outside Counsel

and In-House Counsel, such counsel’s immediate paralegals and staff, and any copying or
clerical litigation support services working at the direction of such counsel, paralegals, and staff;
(iii)

Not more than five (5) representatives of each of Defendant Apple

and Defendant T-Mobile who are officers or employees of Apple or T-Mobile to whom
disclosure is reasonably necessary for this case, provided that each such person has agreed to be
bound by the provisions of the Protective Order by signing a copy of Exhibit A;
(iv)

Any outside expert or consultant retained by the Receiving Party to

assist in this action, provided that disclosure is only to the extent necessary to perform such
work; and provided that: (a) such expert or consultant has agreed to be bound by the provisions
of the Protective Order by signing a copy of Exhibit A; (b) such expert or consultant is not a
current officer, director, or employee of a Party or of a competitor of a Party, nor anticipated at
the time of retention to become an officer, director or employee of a Party or of a competitor of a

Party; and (c) such expert or consultant accesses the materials in the United States only, and does
not transport them to or access them from any foreign jurisdiction. Without the express prior
written consent of the Defendant that produced the Protected Material, no expert or consultant
retained by a Defendant in this matter shall have access to “CONFIDENTIAL – ATTORNEYS’
EYES ONLY” Discovery Material produced by another Defendant in this matter;
(v)

Court reporters, stenographers and videographers retained to

record testimony taken in this action;
(vi)

The Court, jury, and court personnel;

(vii)

Graphics, translation, design, and/or trial consulting personnel,

having first agreed to be bound by the provisions of the Protective Order by signing a copy
of Exhibit A;
(viii)

Mock jurors who have signed an undertaking or agreement

agreeing not to publicly disclose Protected Material and to keep any information concerning
Protected Material confidential;
(ix)

Any mediator who is assigned to hear this matter, and his or her

staff, subject to their agreement to maintain confidentiality to the same degree as required by this
Protective Order; and
(x)

Any other person with the prior written consent of the Producing

Party.
9.

DISCOVERY MATERIAL DESIGNATED AS “CONFIDENTIAL –
ATTORNEYS’ EYES ONLY”
(a)

A

Producing

Party

may

designate

Discovery

Material

as

“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” if it contains or reflects information that is
extremely confidential and/or sensitive in nature and the Producing Party reasonably believes

that the disclosure of such Discovery Material is likely to cause economic harm or significant
competitive disadvantage to the Producing Party.

The Parties agree that the following

information, if non-public, shall be presumed to merit the “CONFIDENTIAL – ATTORNEYS’
EYES ONLY” designation: trade secrets, pricing information, financial data, sales information,
sales or marketing forecasts or plans, business plans, sales or marketing strategy, product
development information, engineering documents, testing documents, and other non-public
information of similar competitive and business sensitivity. The presumption does not prejudice any
parties' right to challenge the designation.
(b)
Unless otherwise ordered by the Court, Discovery Material designated as
“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” may be disclosed only to:
(i)

Plaintiffs’ counsel;

(ii)

Defendant Apple’s and Defendant T-Mobile’s Outside Counsel, provided

that such Outside Counsel is not involved in competitive decision-making, as defined by U.S.
Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), on behalf of a Party or a
competitor of a Party, and In-House Counsel, as well as counsel’s immediate paralegals and
staff, and any copying or clerical litigation support services working at the direction of such
counsel, paralegals, and staff;
(iii)

Not more than five (5) representatives of each of Defendant Apple and

Defendant T-Mobile who are officers or employees of Apple or T-Mobile to whom disclosure is
reasonably necessary for this case, provided that: (a) each such person has agreed to be bound
by the provisions of the Protective Order by signing a copy of Exhibit A; and (b) no
unresolved objections to such disclosure exist after proper notice has been given to all Parties
as set forth in Paragraph 10 below;
(iv)

Any outside expert or consultant retained by the Receiving Party to assist

in this action, provided that disclosure is only to the extent necessary to perform such work; and

provided that: (a) such expert or consultant has agreed to be bound by the provisions of the
Protective Order by signing a copy of Exhibit A; (b) such expert or consultant is not a current
officer, director, or employee of a Party or of a competitor of a Party, nor anticipated at the time
of retention to become an officer, director, or employee of a Party or of a competitor of a Party;
(c) such expert or consultant is not involved in competitive decision-making, as defined by U.S.
Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), on behalf of a Party or a
competitor of a Party; and (d) such expert or consultant accesses the materials in the
United States only, and does not transport them to or access them from any foreign jurisdiction;
and (e) no unresolved objections to such disclosure exist after proper notice has been given to all
Parties as set forth in Paragraph 10 below. Without the express prior written consent of the
Defendant that produced the Protected Material, no expert or consultant retained by a Defendant
in this matter shall have access to “CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES
ONLY” Discovery Material produced by another Defendant in this matter;
(v)

Court reporters, stenographers and videographers retained to record

testimony taken in this action;
(vi)

The Court, jury, and court personnel;

(vii)

Graphics, translation, design, and/or trial consulting personnel, having

first agreed to be bound by the provisions of the Protective Order by signing a copy of
Exhibit A;
(viii) Any mediator who is assigned to hear this matter, and his or her staff,
subject to their agreement to maintain confidentiality to the same degree as required by this
Protective Order; and
(ix)

Any other person with the prior written consent of the Producing Party.

(c)

In addition, a Party may disclose arguments and materials derived from

Discovery Material designated as “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” to mock
jurors who have signed an undertaking or agreement agreeing not to publicly disclose Protected
Material and to keep any information concerning Protected Material confidential. A Party may
not disclose to mock jurors any original, as-produced materials or information (including, for
example, documents, deposition testimony, or interrogatory responses) produced by another
Party designated as “CONFIDENTIAL - ATTORNEYS’ EYES ONLY.”
10.

NOTICE OF DISCLOSURE
(a)

Prior to disclosing any Protected Material to any person described in

Paragraphs 9(b)(iii) OR 9(b)(iv) (referenced below as “Person”), or prior to a Defendant’s
disclosure of another Defendant’s Protected Material consistent with Paragraph 1(b), the Party
seeking to disclose such information shall provide the Producing Party with written notice that
includes:
(i)

the name of the Person;

(ii)

an up-to-date curriculum vitae of the Person;

(iii)

the present employer and title of the Person;

(iv)

an identification of all of the Person’s past and current employment and
consulting relationships, including direct relationships and relationships through
entities owned or controlled by the Person, including but not limited to an
identification of any individual or entity with or for whom the person is employed
or to whom the person provides consulting services relating to the design,
development, operation, or patenting of iMessage, FaceTime, and Apple ID

authentication, or relating to the acquisition of intellectual property assets relating
to iMessage, FaceTime, and Apple ID authentication;
(v)

an identification of all pending patent applications on which the Person is named
as an inventor, in which the Person has any ownership interest, or as to which the
Person has had or anticipates in the future any involvement in advising on,
consulting on, preparing, prosecuting, drafting, editing, amending, or otherwise
affecting the scope of the claims; and

(vi)

a list of the cases in which the Person has testified at deposition or trial within the
last five (5) years.

Further, the Party seeking to disclose Protected Material shall provide such other information
regarding the Person’s professional activities reasonably requested by the Producing Party for it
to evaluate whether good cause exists to object to the disclosure of Protected Material to the
outside expert or consultant. During the pendency of and for a period of two (2) years after the
final resolution of this action, including all appeals, the Party seeking to disclose Protected
Material shall immediately provide written notice of any change with respect to the Person’s
involvement in the design, development, operation or patenting of iMessage, FaceTime, and
Apple ID authentication, or the acquisition of intellectual property assets relating to iMessage,
FaceTime, and Apple ID authentication.
(b)

Within fourteen (14) days of receipt of the disclosure of the Person, the

Producing Party or Parties may object in writing to the Person for good cause. In the absence of
an objection at the end of the fourteen (14) day period, the Person shall be deemed approved
under this Protective Order. There shall be no disclosure of Protected Material to the Person
prior to expiration of this fourteen (14) day period. If the Producing Party objects to disclosure

to the Person within such fourteen (14) day period, the Parties shall meet and confer via
telephone or in person within seven (7) days following the objection and attempt in good faith to
resolve the dispute on an informal basis. If the dispute is not resolved, the Party objecting to the
disclosure will have seven (7) days from the date of the meet and confer to seek relief from the
Court. If relief is not sought from the Court within that time, the objection shall be deemed
withdrawn. If relief is sought, designated materials shall not be disclosed to the Person in
question until the Court resolves the objection.
(c)

For purposes of this section, “good cause” shall include an objectively

reasonable concern that the Person will, advertently or inadvertently, use or disclose Discovery
Materials in a way or ways that are inconsistent with the provisions contained in this Order.
(d)

Prior to receiving any Protected Material under this Order, the Person

must execute a copy of the “Agreement to Be Bound by Protective Order” (Exhibit A hereto) and
serve it on all Parties.
(e)

An initial failure to object to a Person under this Paragraph 10 shall not

preclude the nonobjecting Party from later objecting to continued access by that Person for good
cause. If an objection is made, the Parties shall meet and confer via telephone or in person
within seven (7) days following the objection and attempt in good faith to resolve the dispute
informally. If the dispute is not resolved, the Party objecting to the disclosure will have seven
(7) days from the date of the meet and confer to seek relief from the Court. The designated
Person may continue to have access to information that was provided to such Person prior to the
date of the objection. If a later objection is made, no further Protected Material shall be
disclosed to the Person until the Court resolves the matter or the Producing Party withdraws its
objection. Notwithstanding the foregoing, if the Producing Party fails to move for a protective

order within seven (7) business days after the meet and confer, further Protected Material may
thereafter be provided to the Person.
11.

CHALLENGING DESIGNATIONS OF PROTECTED MATERIAL
(a)

A Party shall not be obligated to challenge the propriety of any

designation of Discovery Material under this Order at the time the designation is made, and a
failure to do so shall not preclude a subsequent challenge thereto.
(b)

Any challenge to a designation of Discovery Material under this Order

shall be written, shall be served on outside counsel for the Producing Party, shall particularly
identify the documents or information that the Receiving Party contends should be differently
designated, and shall state the grounds for the objection. Thereafter, further protection of such
material shall be resolved in accordance with the following procedures:
(i)

The objecting Party shall have the burden of conferring either in

person, in writing, or by telephone with the Producing Party claiming protection (as well as any
other interested party) in a good faith effort to resolve the dispute. The Producing Party shall
have the burden of justifying the disputed designation;
(ii)

Failing agreement, the Receiving Party may bring a motion to the

Court for a ruling that the Discovery Material in question is not entitled to the status and
protection of the Producing Party’s designation. The Parties’ entry into this Order shall not
preclude or prejudice either Party from arguing for or against any designation, establish any
presumption that a particular designation is valid, or alter the burden of proof that would
otherwise apply in a dispute over discovery or disclosure of information;
(iii)

Notwithstanding any challenge to a designation, the Discovery

Material in question shall continue to be treated as designated under this Order until one of the

following occurs: (a) the Party who designated the Discovery Material in question withdraws
such designation in writing; or (b) the Court rules that the Discovery Material in question is
not entitled to the designation.
12.

SUBPOENAS OR COURT ORDERS
(a)

If at any time Protected Material is subpoenaed by any court, arbitral,

administrative, or legislative body, the Party to whom the subpoena or other request is directed
shall give prompt written notice thereof to every Party who has produced such Discovery
Material and to its counsel and shall provide each such Party with an opportunity to move for a
protective order regarding the production of Protected Materials implicated by the subpoena.
13.

FILING PROTECTED MATERIAL
(a)

Absent written permission from the Producing Party or a court Order

secured after appropriate notice to all interested persons, a Receiving Party may not file or
disclose in the public record any Protected Material.
(b)

Any Party is authorized under this Court’s ECF Rules & Instructions,
seek to
Section 6 and Judge Schofield’s Individual Rule I.D.3 to file under seal with the Court any brief,
document or materials that are designated as Protected Material under this Order.
14.

INADVERTENT DISCLOSURE OF PRIVILEGED MATERIAL
(a)

Pursuant to Federal Rule of Evidence 502(d), the inadvertent production

by a Party of Discovery Material subject to the attorney-client privilege, work-product
protection, or any other applicable privilege or protection is not a waiver in the above-captioned
action or in any other federal or state proceeding.
(b)

Upon a request from any Producing Party who has inadvertently produced

Discovery Material that it believes is privileged and/or protected, each Receiving Party shall

immediately return such Protected Material or Discovery Material and all copies to the Producing
Party, except for any pages containing privileged markings by the Receiving Party which shall
instead be destroyed and certified as such by the Receiving Party to the Producing Party.
(c)

Nothing herein shall prevent the Receiving Party from preparing a record

for its own use containing the date, author, addresses, and topic of the inadvertently produced
Discovery Material and such other information as is reasonably necessary to identify the Discovery
Material and describe its nature to the Court in any motion to compel production of the Discovery
Material.
15.

INADVERTENT FAILURE TO DESIGNATE PROPERLY
(a)

The inadvertent failure by a Producing Party to designate Discovery

Material as Protected Material with one of the designations provided for under this Order shall
not waive any such designation provided that the Producing Party notifies all Receiving Parties
that such Discovery Material is protected under one of the categories of this Order within
fourteen (14) days of the Producing Party learning of the inadvertent failure to designate. The
Producing Party shall reproduce the Protected Material with the correct confidentiality
designation within seven (7) days upon its notification to the Receiving Parties. Upon receiving
the Protected Material with the correct confidentiality designation, the Receiving Parties shall
return or securely destroy, at the Producing Party’s option, all Discovery Material that was not
designated properly.
(b)

A Receiving Party shall not be in breach of this Order for any use of such

Discovery Material before the Receiving Party receives such notice that such Discovery Material
is protected under one of the categories of this Order, unless an objectively reasonable person
would have realized that the Discovery Material should have been appropriately designated with

a confidentiality designation under this Order. Once a Receiving Party has received notification
of the correct confidentiality designation for the Protected Material with the correct
confidentiality designation, the Receiving Party shall treat such Discovery Material (subject to the
exception in Paragraph 17(c) below) at the appropriately designated level pursuant to the terms of
this Order.
(c)

Notwithstanding

the

above,

a

subsequent

designation

of

“CONFIDENTIAL,” or “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” shall apply on a
going forward basis and shall not disqualify anyone who reviewed “CONFIDENTIAL,” or
“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” materials while the materials were not
marked “CONFIDENTIAL,” or “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” from
engaging in the activities set forth in Paragraph 6(b).
16.

INADVERTENT DISCLOSURE NOT AUTHORIZED BY ORDER
(a)

In the event of a disclosure of any Discovery Material pursuant to this

Order to any person or persons not authorized to receive such disclosure under this Protective
Order, the Party responsible for having made such disclosure, and each Party with knowledge
thereof, shall immediately notify counsel for the Producing Party whose Discovery Material has
been disclosed and provide to such counsel all known relevant information concerning the nature
and circumstances of the disclosure. The responsible disclosing Party shall also promptly take
all reasonable measures to retrieve the improperly disclosed Discovery Material and to ensure
that no further or greater unauthorized disclosure and/or use thereof is made.
(b)

Unauthorized or inadvertent disclosure does not change the status of

Discovery Material or waive the right to hold the disclosed document or information as
Protected.

17.

FINAL DISPOSITION
(a)

Not later than ninety (90) days after the Final Disposition of this case,

each Party shall return all Discovery Material of a Producing Party to the respective outside
counsel of the Producing Party or destroy such Material, at the option of the Producing Party.
For purposes of this Order, “Final Disposition” occurs after an order, mandate, or dismissal
finally terminating the above-captioned action with prejudice, including all appeals.
(b)

All Parties that have received any such Discovery Material shall certify in

writing that all such materials have been returned to the respective outside counsel of the
Producing Party or destroyed. Notwithstanding the provisions for return of Discovery Material,
outside counsel may retain one set of pleadings, correspondence and attorney and consultant
work product (but not document productions) for archival purposes.
18.

DISCOVERY FROM EXPERTS OR CONSULTANTS
(a)

Absent good cause, drafts of reports of testifying experts, and reports and

other written materials, including drafts, of consulting experts, shall not be discoverable.
(b)

Reports and materials exempt from discovery under the foregoing

Paragraph shall be treated as attorney work product for the purposes of this case and Protective
Order.
19.

MISCELLANEOUS
(a)

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

person to seek its modification by the Court in the future. By stipulating to this Order, the
Parties do not waive the right to argue that certain material may require additional or different
confidentiality protections than those set forth herein.

(b)

Termination of Matter and Retention of Jurisdiction. The Parties agree

that the terms of this Protective Order shall survive and remain in effect after the Final
Determination of the above-captioned matter. The Court shall retain jurisdiction after Final
Determination of this matter to hear and resolve any disputes arising out of this Protective Order.
(c)

Successors. This Order shall be binding upon the Parties hereto, their

attorneys, and their successors, executors, personal representatives, administrators, heirs, legal
representatives, assigns, subsidiaries, divisions, employees, agents, retained consultants and
experts, and any persons or organizations over which they have direct control.
(d)

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. 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. This Order shall not
constitute a waiver of the right of any Party to claim in this action or otherwise that any
Discovery Material, or any portion thereof, is privileged or otherwise non-discoverable, or is not
admissible in evidence in this action or any other proceeding.
(e)

Burdens of Proof.

Notwithstanding anything to the contrary above,

nothing in this Protective Order shall be construed to change the burdens of proof or legal
standards applicable in disputes regarding whether particular Discovery Material is confidential,
which level of confidentiality is appropriate, whether disclosure should be restricted, and if so,
what restrictions should apply.
(f)

Modification by Court. This Order is subject to further court order based

upon public policy or other considerations, and the Court may modify this Order sua sponte in
the interests of justice. The United States District Court for the Southern District of New York is

responsible for the interpretation and enforcement of this Order.

All disputes concerning

Protected Material, however designated, produced under the protection of this Order shall be
resolved by the United States District Court for the Southern District of New York.
(g)

Discovery Rules Remain Unchanged. Nothing herein shall alter or change

in any way the discovery provisions of the Federal Rules of Civil Procedure, the Local Rules for
the United States District Court for the Southern District of New York, or the Court’s own
orders. Identification of any individual pursuant to this Protective Order does not make that
individual available for deposition or any other form of discovery outside of the restrictions and
procedures of the Federal Rules of Civil Procedure, the Local Rules for the United States District
Court for the Southern District of New York, or the Court’s own orders.
(h)

Court’s Discretion. The Parties acknowledge that the Court retains

discretion as to whether, in Orders and Opinions, to afford confidential treatment to information
that the Parties have redacted, sealed or designated as confidential.
SO ORDERED.
Dated: November 16, 2021
New York, New York

EXHIBIT A
I,

, acknowledge and declare that I have received a

copy of the Protective Order (“Order”) in Ohanian, et al. v. Apple Inc., et al., United States
District Court, Southern District of New York, Civil Action No. 1:20-cv-05162. Having read
and understood the terms of the Order, I agree to be bound by the terms of the Order and
consent to the jurisdiction of said Court for the purpose of any proceeding to enforce the
terms of the Order.
Name of individual:
Present occupation/job description:

Name of Company or Firm:
Address:
Dated:

[Signature]