Mobile Tech., Inc. v. Invue Security Products Inc.

Filing 106

STIPULATED PROTECTIVE ORDER. Signed by Magistrate Judge David S. Cayer on 3/12/2020. (mek)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
MOBILE TECH. INC. d/b/a
MOBILE TECHNOLOGIES INC.
and MTI,

CASE NO. 3:18-cv-00052-KDB-DSC

Plaintiff,
vs.
INVUE SECURITY PRODUCTS
INC.,
Defendant.
STIPULATED PROTECTIVE ORDER
Plaintiff, Mobile Tech, Inc. (“Plaintiff” or “MTI”) and Defendant, InVue Security
Products, Inc. (“Defendant” or “InVue”) by and through their attorneys of record, jointly request
the entry of this Protective Order to govern the exchange of information and the production of
documents that at least one party considers to be or to contain confidential information. The
parties jointly request that the Court enter the Protective Order pursuant to Federal Rule of Civil
Procedure 26(c). Unless modified upon proper application to the Court, this Order shall remain
in effect through the conclusion of this litigation.
The parties agree that good cause exists to protect the confidential nature of the
information contained in documents, interrogatory responses, responses to requests for
admission, deposition testimony or other discovery vehicles utilized in this case. This action
concerns allegations of patent infringement, trademark violation, and unfair competition. The
parties expect to exchange documents and information relating to trade secrets or confidential
research and development or commercial information, the disclosure of which is likely to cause
harm to the party producing such information. The parties agree that the entry of this Stipulated
PROTECTIVE ORDER

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Protective Order ("Protective Order") is warranted to protect against disclosure of such
documents and information.
Based upon the above stipulation of the parties, and the Court being duly advised, IT IS
HEREBY ORDERED as follows:
1. Designated Materials
a.

A party or nonparty (“Designating Entity”) may designate as

CONFIDENTIAL, in whole or in part, any document, thing, or information (collectively,
“material”) which is to be disclosed or produced in this action and which the Designating Entity
believes in good faith contains trade secrets or other confidential research, development, or
commercial information which is not generally known to the public and which the Designating
Party would normally not reveal to third parties or, if disclosed, would require such third parties
to maintain in confidence. The marking shall state “CONFIDENTIAL” or other similar legend,
along with a designation identifying the Designating Entity.
b.

A Designating Entity may designate as RESTRICTED CONFIDENTIAL

– OUTSIDE COUNSEL ONLY, in whole or in part, any material which is to be disclosed or
produced in this action and which the Designating Entity believes in good faith contains highly
confidential information which is not generally known to the public and which is so
commercially sensitive or confidential that disclosure to persons other than those authorized
under Paragraph 7 below would have the effect of causing harm to the competitive commercial
position of the Designating Entity. The marking shall state “RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY” or other similar legend, along with a designation identifying the
Designating Entity.

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c.

Items designated as CONFIDENTIAL or RESTRICTED

CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR are referred to herein as “Designated
Materials.”
d.

The designations described in subparagraphs (a) and (b) above or in

Paragraph 10 below shall be made, where practical, by the Designating Entity by marking or
labeling each page of a document, each separate part or component of a thing, or each separate
item of other information in a conspicuous manner with the appropriate legend. If not practical
to so mark the material itself, a container for, or a tag attached to, the material shall be so
marked. For documents produced in native format, because the above requirements may be
technically infeasible or impossible, the words “CONFIDENTIAL,” or “RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY,” or “RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR” shall be placed within the file name of
the electronic document or within the name of a folder containing the electronic document(s). If
any items produced in a non-paper medium are printed out by the party that receives the material
from a Designating Entity (the “Receiving Party”), the Receiving Party must mark each page of
the printed version with the confidentiality designation if the printed version is not already
marked. The designation or non-designation of any such material under this Protective Order
shall not be admissible as evidence in this litigation for any purpose. Any response to written
interrogatories or requests for admission (or any portion thereof) that constitute or contain
CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR
information shall be labeled or marked with the appropriate legend by the Designating Entity.

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e.

Notwithstanding any other provision of this Protective Order, information

is neither CONFIDENTIAL nor RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY nor RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY –
PROSECUTION BAR if: (i) the parties, including any non-party Designating Entity, agree, or
the Court rules, it is in the public domain; (ii) the parties, including any non-party Designating
Entity, agree, or the Court rules, it has become part of the public domain by publication or other
means, except by an unauthorized act or omission on the part of the Receiving Party; (iii) it is
supplied to the Receiving Party by a third party who is under no obligation to maintain such
information in confidence; and/or (iv) it is or becomes lawfully known to or in the possession of
the Receiving Party without any breach of this Protective Order or other confidentiality
obligation.
f.

A Designating Entity will use reasonable care to avoid designating any

document or information as CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY –
PROSECUTION BAR which is not entitled to such designation.
2.

Material Produced for Inspection. Where discovery is provided by allowing

access to the documents or tangible things for inspection instead of delivering copies of them, the
Designating Entity bears the burden of raising confidentiality concerns regarding inspected
documents or tangible things. If a Designating Entity believes that inspection, measuring,
testing, sampling, or photographing of that entity’s processes, products, equipment, premises, or
other property pursuant to Fed. R. Civ. P. 34 will reveal or disclose information that is in good
faith deemed CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION

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BAR, that entity shall advise in advance the party seeking such discovery that the inspection,
measuring, testing, sampling, or photographing will be permitted only on a confidential basis,
and that the information discovered shall be treated as CONFIDENTIAL or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR. The failure to advise shall not,
however, waive the ability to protect such information under this Protective Order, except the
prosecution bar of Paragraph 10 shall not apply to any individual or attorney because he or she
viewed materials later designated as RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY – PROSECUTION BAR unless such individual or attorney views the materials after such
designation.
3.

Persons Permitted in Depositions. If during the course of a deposition taken in

this action, any questions are to be asked or any answers are to be given regarding (a)
CONFIDENTIAL material, then only persons designated in Paragraph 8 below (and the
deponent’s counsel in the case of a separately represented non-party) shall be allowed to be
present during such portion of the deposition; or (b) RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY material, then only persons designated in Paragraph 7 below (and
the deponent’s counsel in the case of a separately represented non-party) shall be allowed to be
present during such portion of the deposition; or (c) RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR material, then only persons designated in
Paragraph 10 below (and the deponent’s counsel in the case of a separately represented nonparty) shall be allowed to be present during such portion of the deposition. This paragraph shall
not be deemed to authorize disclosure of any CONFIDENTIAL or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –

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OUTSIDE COUNSEL ONLY – PROSECUTION BAR material to any person to whom
disclosure is prohibited under the Protective Order. It shall be the obligation of the Designating
Entity that produced the CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY –
PROSECUTION BAR material to invoke this provision.
4.

Designation of Deposition Transcripts. With respect to depositions of any

party, non-party, or any person employed by, formerly employed by, or acting on behalf of a
party to this action, such party, non-party, or another party to this suit may at the deposition
designate all (if appropriate) or portions of the deposition as CONFIDENTIAL or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR and request the reporter to insert a
statement regarding the confidentiality of the information into the deposition transcript. Such a
designation may be done orally at the time of the deposition or in writing within fifteen calendar
days (or the next following day that the court is open or operational in the event that the fifteenth
day is not a day on which the court is open or operational) after receipt of the deposition
transcript. Until expiration of the fifteen day designation period and unless otherwise agreed, the
entire transcript with exhibits shall be considered RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY (or as otherwise designated orally at the time of the deposition) and treated as
such pursuant to the terms of this Protective Order, and no person attending such a deposition
shall disclose the contents of the deposition to any person other than those described in
Paragraph 7 below during said fifteen days. Upon being informed that certain portions of a
deposition are designated as CONFIDENTIAL or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL

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ONLY – PROSECUTION BAR, each party shall cause each copy of the transcript in its
possession, custody, or control to be so marked, to the extent not already marked by the reporter.
Video or DVD versions of the deposition will automatically have the same designation as the
transcript. Documents used as exhibits in a deposition which have already been designated as
CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR
shall keep their confidentiality designation. Notwithstanding anything to the contrary in this
Protective Order, the prosecution bar of Paragraph 10 shall not apply to any individual or
attorney because he or she attended a deposition for which portions were later designated as
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR
unless such individual or attorney was notified of the designation at the deposition prior to the
testimony at issue (and does not leave the deposition during the relevant designated testimony) or
if such individual or attorney views the designated testimony in the transcript after designation.
5.

Limits on Use of Designated Materials. All materials designated

CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR as
provided herein shall not be used by any recipient or disclosed to anyone for any purpose other
than in connection with the above-captioned action and any related appeal, and shall not be
disclosed by the recipient to anyone other than those persons entitled to have access to such
material pursuant to Paragraphs 7, 8 or 10 below, unless and until the restrictions herein are
removed by an order of the Court or by written agreement of the Designating Entity. Nothing in
this Protective Order shall bar or otherwise restrict a producing party or non-party from having
access to or using, without notification to any other party or non-party, CONFIDENTIAL or

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RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR materials that the
producing party or non-party has produced in this action. Where a Receiving Party designated a
document CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION
BAR solely because it contains the confidential information of a Designating Entity (for
example, in a pleading or brief), nothing limits the Designating Entity from showing the
designated document to anyone.
6.

Challenges to Designations and Resolution of Disputes.
a.

Nothing in this Protective Order shall be construed to prevent any party to

this action from opposing the designation of materials as CONFIDENTIAL or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR, nor shall the acceptance of documents
or information so designated constitute any agreement, admission, or concession that the
materials are in fact properly subject to protection under Fed. R. Civ. P. 26 or on any other basis.
b.

A party opposing the designation of materials as CONFIDENTIAL or

RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR shall serve a written
objection, including a statement of the grounds for the objection, on the Designating Entity.
Counsel for the parties shall confer in good faith within court days after receipt of the objection
to attempt to resolve the dispute. If, after conferring, a dispute still remains, the objecting party
then may, within five court days of the conference, move the Court for an order removing or
replacing the CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL

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ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION
BAR designation. On such a motion, it shall be the burden of the Designating Entity to prove
that the material or information was properly designated. If an objecting party does not make a
timely motion, such objection is deemed withdrawn with prejudice. Until a ruling from the
Court, disputed items are presumed to be CONFIDENTIAL or RESTRICTED CONFIDENTIAL
– OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY – PROSECUTION BAR as designated and will be handled in accordance with the
provisions of this Protective Order.
c.

The designation of material as CONFIDENTIAL or RESTRICTED

CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR may also be challenged under this
section if any of the events described in Paragraph 1(e) have come to pass.
d.

In the event that the Designating Entity alleges that a Receiving Party’s

use of material designated as CONFIDENTIAL or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY – PROSECUTION BAR violated the terms of this Protective Order, the Designating
Entity shall have the burden of showing that the Receiving Party had material designated as
CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR and
used it in violation of this Protective Order.
e.

A party shall not be obliged to challenge the propriety of a designation at

the time made and the failure of the Receiving Party to challenge the confidential status of any

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material under this Protective Order at the time of production shall not be deemed a waiver of the
Receiving Party’s right to challenge the propriety of such designation at any time thereafter.
7.

Access to RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY

Materials. Access to material designated RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY under this Protective Order, and to any portion of any transcript, brief,
affidavit, letter, memorandum, or other paper that contains, reveals, or refers to material so
designated, shall be limited to:
a.

outside counsel of record for the parties;

b.

the employees of such outside counsel of record (including assistants,

paralegals, and clerk) actually assisting such counsel in connection with this case, provided,
however, that such employees have access to material designated RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY only to the extent necessary to perform their
duties;
c.

independent copy and litigation support services solely for purposes of

making copies, preparing demonstrative or other exhibits, or otherwise assisting in the
preparation of discovery or trial materials for use in the litigation and provided they have signed
an undertaking or agreement agreeing not to disclose publicly, or otherwise, Designated Material
and to keep any information concerning Designated Material confidential;
d.

independent document management support services, but only to the

extent necessary to perform their duties and provided they have signed an undertaking or
agreement agreeing not to disclose publicly, or otherwise, Designated Material and to keep any
information concerning Designated Material confidential;

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e.

mock jurors or jury consultants who have signed an undertaking or

agreement agreeing not to disclose publicly, or otherwise, Designated Material and to keep any
information concerning Designated Material confidential;
f.

court reporters involved in transcribing depositions or other proceedings in

this litigation, and videographers involved in recording depositions, provided that they agree to
be subject to the terms of this Protective Order and provided that they are provided information
designated RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY only to the extent
necessary to perform their duties;
g.

the Court and any Court of appellate jurisdiction;

h.

Court personnel involved with this case;

i.

any designated arbitrator or mediator who is assigned or selected to hear

this matter, along with his or her staff, who have been provided a copy of this Protective Order
and have executed a copy of the agreement in Exhibit A, provided that no such designated or
selected arbitrator or mediator is an employee of a party;
j.

members of the jury in this case;

k.

witnesses who are deposed in this action or who are called as witnesses at

any hearing or trial in this action, but only (1) in preparation for the deposition, hearing, or trial,
or (2) during the deposition, hearing, or trial, and only under the following circumstances:
i)

any witness may be shown, but not allowed to retain,

RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY material in which the witness
is identified as the originator, signatory, author, addressee, or recipient of the original or a copy;

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ii)

a current officer, director, or employee of a Designating Entity

may be shown that entity’s RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY
material;
iii)

any witness selected by a Designating Entity to provide testimony

pursuant to Fed. R. Civ. P. 30(b)(6) may be shown that entity’s RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY material;
iv)

a former officer, director, or employee of a Designating Entity may

be show that entity’s RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY material
if it appears from the face of the material that the witness previously had access to the material
while employed by the Designating Entity, provided that counsel making such disclosure shall
inform the witness that the matter is confidential and may not be disclosed or used except as
provided in this Protective Order;
l.

any person who appears as the author or as an addressee on the face of the

document or who has been identified by the Designating Entity as having been provided with the
document or the information by the Designating Entity;
m.

any person that already has or obtains legitimate possession of such

Designated Materials;
n.

non-party experts or consultants, including their personnel, retained to

assist counsel of record in this case who become qualified to receive material designated under
this Protective Order in accordance with the following procedure:
1.

Counsel for a party proposing any such expert or consultant

shall submit to outside counsel of record for the other parties a copy of the
complete Notice of Adherence to Protective Order in the form attached

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hereto as Exhibit A signed by such expert or consultant, and current resume
or curriculum vitae for such person, which shall disclose (1) any
employment and/or consultations the expert has had (including direct
relationships and relationships through entities owned or controlled by the
proposed expert or consultant) and a list of the cases in which the proposed
expert or consultant has testified at deposition or trial within the last four (4)
years, unless the employment or consultation was for a Party, in which case
all such employment and/or consultations must be disclosed; and (2) the
subject matter of the employment, consultation, and/or testimony; and (3)
whether the proposed expert or consultant is a current officer, director, or
employee of a Party, or anticipates at the time of retention becoming an
officer, director, or employee of a Party. The original of each such Notice
and of any related disclosures shall be maintained by counsel proposing the
expert;
2.

To the extent that the expert or consultant has or had a

confidential employment or consultation arrangement, the disclosure shall
identify, to the extent possible without violating any confidentiality
obligations, (i) the industry in which the relationship(s) took place, (ii) the
general technology involved, (iii) the dates of the relationship(s), and (iv)
any non-confidential information available about the relationship(s) that
would aid in describing the circumstances of the relationship(s); however,
the disclosure of expert or consulting relationships with non-parties may be
limited to the last four years. If any of this information cannot be disclosed

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because of confidentiality obligations, the proposing party must identify
which category or categories of information is or are not being disclosed;
3.

Counsel for a party proposing any such expert or consultant

shall provide such other information regarding the proposed expert’s or
consultant’s professional activities reasonably requested by the opposing
party within three days of the request in order for the opposing party to
evaluate whether good cause exists to object to the disclosure of Designated
Materials to the non-party expert or consultant. An expert’s or consultant’s
non-disclosure of information related to a confidential employment or
consultation arrangement, shall not, by itself, be legitimate grounds for
objection to, or disqualification of, the non-party expert or consultant.
4.

Unless a party notifies the proposing counsel in writing of

its objection to any such proposed expert or consultant, and the basis
therefore, within ten days after receipt of a copy of the Notice referred to in
subparagraph (i) above, such expert or consultant shall thereafter be deemed
a qualified recipient and entitled to receive the designating party’s
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY material
pursuant to the terms and conditions of this Protective Order. There shall be
no disclosure of Designated Material to the proposed expert or consultant
prior to expiration of this ten day period.
5.

Should the opposing party timely notify proposing counsel

of its objection, the parties shall meet and confer via telephone or in person
within seven days of the opposing party’s written objection and, if not

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resolved, the opposing party shall have seven days from the meet and confer
within which to file a motion for a protective order to preclude the proposed
disclosure. Where objection is made, no designated material shall be
disclosed to the proposed expert or consultant until the day after the last day
to file a motion for a protective order (where no protective order is sought),
or upon entry of the court’s order denying the producing party’s motion for
protection. Failure of the objecting party to file such a motion shall be
deemed a waiver of any objection to the disclosure of information to the
proposed person, subject to the terms of this Protective Order.
6.

Any third party subject to discovery in this litigation shall

be treated as a party under Paragraph 7(d) to permit such third party to raise
valid objections, if necessary, to an expert or consultant having access to the
CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY materials produced by that third party.
o.

one (1) representative of a Receiving Party constituting a General Counsel

or other in-house counsel, provided that such person has agreed to be bound by the provisions of
this Protective Order by signing a copy of Exhibit A.
p.

any other persons with the prior written consent of the Producing Party, or

upon such terms and conditions as the parties may agree or as the Court, by order, directs.
8.

Access to CONFIDENTIAL Materials. Access to material designated

CONFIDENTIAL under this Protective Order, and to any portion of any transcript, brief,
affidavit, letter, memorandum, or other paper that contains, reveals, or refers to material so
designated, shall be limited to the persons and circumstances identified in Paragraph 7 hereof

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and additionally not more than three representatives of a Receiving Party who are officers or
employees of the Receiving Party who may be, but need not be, in-house counsel of the
Receiving Party, as well as their immediate clerical staff to whom disclosure is reasonably
necessary for this case, provided that: (a) each such person has agreed to be bound by the
provisions of this Protective Order by signing a copy of Exhibit A; and (b) no unresolved
objections to such disclosure exist after proper notice has been given by providing the executed
copy of Exhibit A to the opposing party as set forth in Paragraph 7(n)(i) through 7(n)(iv) above.
The representatives may review CONFIDENTIAL information solely for the purpose of this
action or any related appeal and not for any other purpose.
9.

Disclosure to Unlisted Persons. If an attorney for any Receiving Party desires to

give, show, make available, or communicate (a) any document or information designated
CONFIDENTIAL to a person not authorized by Paragraph 8 to receive such documents or
information, or (b) any document or information designated RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY to a person not authorized by Paragraph 7 to receive such
documents or information, the attorney must first submit to outside counsel for the Designating
Entity a copy of a complete Notice of Adherence to the Protective Order in the form attached
hereto as Exhibit A signed by the person seeking access, and disclose the person’s name, a
statement of that person’s responsibilities that require access to such information, a specific
identification of the information to which access is required by document identification number
or other specific reference, and a brief statement as to why such access is necessary. The
Designating Entity shall have seven court days after receiving the above-described information
to object in writing to such disclosure. Pending resolution of any informal or formal petition for
disclosure, no disclosure shall be made to such person. If the disclosing party who designated

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the document refuses to give its consent, the disclosing and receiving parties shall confer to
attempt to resolve the reasons for withholding consent. If an agreement cannot be reached, the
Receiving Party desiring disclosure of the confidential document or information may file a
motion with the Court for an order granting disclosure, and it bears the burden of proving why
the requested disclosure is appropriate.
10. Prosecution Bar. A Designating Entity may designate as RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR, in whole or in part,
any material which is to be disclosed or produced in this action and which the Designating Entity
believes in good faith contains highly confidential information (1) regarding products, processes
and/or technologies not yet released or sold to the public in the United States (2) which is not
known to the public and cannot be determined from public information and (3) which is so
commercially sensitive or confidential that disclosure to persons who are involved in efforts to
prosecute additional intellectual property rights for the Receiving Party, would have the effect of
causing harm to the competitive commercial position of the Designating Entity. A Designating
Entity may not designate as RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY –
PROSECUTION BAR information regarding products that have already been sold or offered for
sale by anyone, used or displayed by third parties, or publicly used or displayed by any entity,
unless such information cannot be determined from the publicly disclosed information related to
such product(s) (e.g., manufacturing processes). The marking shall state “RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR” or other similar
legend, along with a designation identifying the Designating Entity.
a.

Access to material designated RESTRICTED CONFIDENTIAL –

OUTSIDE COUNSEL ONLY – PROSECUTION BAR under this Protective Order, and

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to any portion of any transcript, brief, affidavit, letter, memorandum, or other paper that
contains, reveals, or refers to material so designated, shall be limited to the persons and
circumstances identified in Paragraph 7(a)-(g) hereof and as further restricted below.
b.

During the pendency of this case, including any appeals, and for one year

after its conclusion, any recipient of “RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY – PROSECUTION BAR” information, documents and/or other
materials shall not participate in, aide in, advise, or counsel the drafting of the disclosure
(written description or drawings) or claim language in connection with the preparation,
filing, and/or prosecution of a patent application in any country concerning the nonpublic, technical product features, information and/or other things disclosed in the
materials or documents designated “RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY – PROSECUTION BAR.” The scope of this Prosecution Bar
includes any and all continuations, continuations in part, divisionals, reissues, and
interferences. The scope also applies to counsel proposing or prosecuting on behalf of a
patent owner claim amendments or new claims in ex parte reexaminations, and motions
to amend in post-grant reviews, and inter partes reviews concerning such patent
applications or patents (including, but not limited to, the patents-in-suit) that issue from
such applications. Nothing in this paragraph, however, prevents any counsel from
making claim amendments or motions to amend in an ex parte reexamination, post-grant
review, or inter partes review before such counsel has viewed information designated as
RESTRICTED CONFIDENTIAL –OUTSIDE COUNSEL ONLY – PROSECUTION
BAR. Additionally, nothing in this paragraph applies to claims that were previously
granted, and thus it does not prevent any counsel from representing a client with respect

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to such claims in an ex parte reexamination, post-grant review, or inter partes review provided such claims are not being amended as set forth above.
c.

Each party shall designate an individual among outside counsel team or

specified email address for service of materials designated as RESTRICTED
CONFIDENTIAL –OUTSIDE COUNSEL ONLY – PROSECUTION BAR. To the
extent any other individuals are served with any materials designated as RESTRICTED
CONFIDENTIAL –OUTSIDE COUNSEL ONLY – PROSECUTION BAR, the
provision of this paragraph shall not apply to the improperly served materials and any
person who viewed improperly served materials is not subject to the bar merely by
having viewed such improperly served materials.
11.

Maintenance of Designated Materials. Material designated CONFIDENTIAL

or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR shall be maintained
in the custody of counsel for the parties except that: (a) any court reporter who transcribes
testimony given in this action may maintain any such designated documents for the purpose of
rendering his or her normal transcribing services; and (b) partial or complete copies of these
documents may be retained by persons entitled to access of such documents under the terms of
this Protective Order to the extent necessary for their study, analysis, and preparation of the case.
Each recipient of material designated CONFIDENTIAL or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY – PROSECUTION BAR shall maintain such material in a secure, safe area and shall
exercise the same standard of care with respect to the storage, custody, use, and dissemination of

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19

such material as is exercised by the recipient with respect to its own confidential and proprietary
material.
12.

Copies and Analyses. Nothing herein shall restrict a qualified recipient of

designated documents or information from making working copies, abstracts, digests, and
analyses of such information solely for use in connection with this litigation, and such working
copies, abstracts, digests, and analyses shall be deemed to have the same level of protection
under the terms of this Protective Order. Further, nothing herein shall restrict a qualified
recipient from converting or translating such information into machine-readable form for
incorporation in a data retrieval system used in connection with this litigation, provided that
access to such information, whatever for stored or reproduced, shall be limited to qualified
recipients.
13.

Designated Material Sought by Non-Parties. Except upon consent of the

Designating Entity or upon order of the Court, any and all materials designated
CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR
produced, served, or otherwise made available by the Designating Entity to another party during
the course of this action, together with all reproductions, copies, abstracts, indices, or summaries
of those materials, shall be used only for preparation and presentation of this action and any
appeals thereof. In the event any person or Receiving Party having possession, custody, or
control of any material produced in this action and designated CONFIDENTIAL or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR by a Designating
Entity receives a subpoena or other process or order to produce such information, such

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20

subpoenaed person or entity shall, promptly after receipt and before a response to such subpoena
or other process or order is due, where possible (and as soon as possible after receipt, where not
possible), notify by mail and email the attorneys of record for the Designating Entity claiming
such confidential treatment of the mater sought by such subpoena or other process or order and
furnish those attorneys with a copy of said subpoena or other process or order. Such subpoenaed
person or entity shall cooperate with respect to any procedure sought to be pursued by the party
whose interest may be affected. The Designating Entity asserting the confidential treatment shall
have the burden of defending against such subpoena, process, or order. The person or party
receiving the subpoena or other process or order shall be entitled to comply with it except to the
extent the Designating Party asserting the confidential treatment is successful in obtaining an
order modifying or quashing it.
14.

Pleadings Containing Confidential Information. Without prior written

permission from the Designating Entity or a Court order secured after appropriate notice to all
interested parties, any pleading, brief, exhibit, or other paper that is filed with the Court or served
on another party that contains, quotes, discusses, or otherwise reveals material designated
CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR
shall be filed under seal. Any party seeking to file any CONFIDENTIAL or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR materials under seal shall seek leave of
the Court, in accordance with the Court’s Local Rules, and a Designating Entity will provide any
supporting declarations or material necessary to support the filing party’s request to file the
pleading under seal. Nothing in this paragraph shall preclude a party from delivering an

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21

additional courtesy copy of any paper containing designated materials, which copy is not sealed,
directly to the judge responsible for the litigation.
15.

Final Disposition of Materials. The ultimate disposition of Designated Material

is subject to a final order of the Court on the completion of this Action. Unless the Court orders
or counsel agree otherwise in writing, within sixty days of the final termination of this action
including any appeals, all CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE
COUNSEL ONLY or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY –
PROSECUTION BAR materials that have been produced, served, or otherwise made available
by the Designating Entity during the course of this action, together with all reproductions, copies
(including copies provided by a Receiving Party to any other person), abstracts, indices, or
summaries of those materials, shall be destroyed or delivered to counsel for the Designating
Entity, except that (1) if those materials are the subject of a valid subpoena or Court order in
another action, the Receiving Party may retain those subject materials only for as long as is
necessary to comply with the subpoena or order; (2) outside counsel of record for each party may
retain a complete set of their case files for this matter, including all pleadings, deposition
transcripts and exhibits, expert reports and exhibits, discovery responses, and correspondence,
but such file copies must be maintained under the conditions of RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY documents; and (3) if materials are contained
in e-mails, back-up tapes, and/or other electronic formats, there shall be no obligation to return or
destroy, but such electronic copies must be maintained under the conditions of RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY documents. Outside counsel for each party
shall remind any experts, consultants, and others as appropriate of their obligation to destroy or
return designated materials. Each party shall submit a written certification by the sixty day

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22

deadline confirming that all material has been destroyed (or handled as otherwise ordered or
agreed in writing). No party shall be in violation of this paragraph to the extent any materials
designated under this Protective Order are not returned or destroyed as required to the extent that
such is an accidental oversight, the party made good-faith efforts to comply with this paragraph,
and the designated materials are returned or destroyed as soon as possible after the party learns
that such had not been previously returned or destroyed.
16.

Inadvertent Failure to Designate. Production of any material without a

designation of confidentiality or an incorrect designation will not be deemed to waive a later
claim as to its proper designation, nor will it prevent the producing party or non-party from
providing written notice designating said document or material CONFIDENTIAL or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR. A producing party
shall promptly notify the receiving party upon discovery of the incorrect designation and shall
have twenty days from the discovery of the improperly designated materials to provide a redesignation. During this period and following re-designation, the material shall thereafter be
treated as if it had originally been designated at the re-designated level. Following any redesignation of material, the party receiving such material shall take reasonable steps to comply
with the re-designation, including, without limitation, retrieving all copies of, excerpts of, and
notes related to any re-designated material from persons not entitled to receive it. Disclosure of
such CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR
materials to persons not authorized to receive that information prior to receipt of the written redesignation shall not be deemed a violation of this Protective Order. If the producing party

PROTECTIVE ORDER

23

chooses to produce new copies of the discovery marked with the appropriate legend, the
Receiving Party shall make a reasonable effort to substitute the new copies for the previous
copies, including but not limited to recalling any copies from any expert or consultant and
substituting correct copies. Notwithstanding anything to the contrary in this Protective Order, the
prosecution bar of Paragraph 10 shall not apply to any individual or attorney because he or she
viewed materials redesignated as RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL
ONLY – PROSECUTION BAR unless such individual or attorney views the materials after such
re-designation.
17.

Improper Disclosure. In the event of a disclosure of any Designated 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 (the “Disclosing
Party”), and each party with knowledge thereof, shall immediately notify counsel for the
Designating Entity whose Designated Material has been disclosed and provide to such counsel
all known relevant information concerning the nature and circumstances of the disclosure,
including, but not limited to, the identity of the person or entity to whom the disclosure of the
Designated Material was made. The Disclosing Party shall also promptly take all reasonable
measure to retrieve the improperly disclosed Designated Material and to ensure that no further or
greater unauthorized disclosure and/or use thereof is made, including, but not limited to, sending
a written request for return or destruction of the document and seeking an undertaking of
confidentiality through the execution of Exhibit A. In the event the improper disclosure is made
to a person not under the control of the Disclosing Party, and the request to that party is not
promptly agreed to in writing, or in the event there is no response, or in the event that the

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24

Disclosing Party deems the making of the request to be a useless act, the Disclosing Party shall
promptly notify the Designating Entity of that fact.
18.

Privileged and Irrelevant Materials. Nothing in this Protective Order shall be

construed as requiring disclosure of privileged materials, materials subject to protection under
the work product doctrine, or materials which are otherwise beyond the scope of discovery.
19.

Inadvertent Disclosure of Privileged Information. Under Rule 502 of the

Federal Rules of Evidence and Rule 26(b)(5)(B) of the Federal Rules of Civil Procedure,
incorporated herein by reference, the inadvertent or unintentional disclosure by the producing
party or non-party of information subject to the attorney-client privilege or work-product
doctrine, or any other applicable privilege or immunity shall not be deemed a waiver in whole or
in part of the party’s or non-party’s claim of privilege or work-product immunity, either as to the
specific information disclosed or as to any other information relating thereto or on the same or
related subject matter. If a party or non-party has inadvertently produced information subject to
a claim of privilege or immunity, it shall promptly provide an updated privilege log that includes
the improperly produced materials. The Receiving Party, upon request, shall return or destroy
the inadvertently produced materials within ten court days of the request, and all copies of those
materials that may been made and any notes regarding those materials shall be destroyed. The
party returning or destroying such information may move the Court for an order compelling
production of such information including on the ground that such production was not inadvertent
or unintentional. However, the inadvertent production of privileged or otherwise protected
materials cannot be a basis for seeking production.

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25

20.

Additional Relief. Nothing in this Protective Order shall be construed to prevent

a party or non-party from seeking such further provisions regarding confidentiality as may be
appropriate.
21.

No Waiver of Objections to Admissibility. Nothing in this Protective Order

shall be construed as a waiver by a party of any objections that might be raised as to the
admissibility at trial of any evidentiary materials.
22.

Third Party Confidential Materials in the Possession of a Disclosing Party.

During the course of this action, a party (the “Requesting Party”) may request production of
material that the party receiving the request believes is subject to contractual or other obligations
of confidentiality express or implied, owed to a third party by the party receiving the request.
The party subject to such contractual or other obligation of confidentiality (the “Disclosing
Party”) shall timely contact the third party to determine whether such third party is willing to
permit disclosure of the confidential document or information under the terms of this Protective
Order and shall inform the third party of the contents of this Protective Order and specifically of
this paragraph. When such notice is given to the third party, the Disclosing Party will advise the
Requesting Party that such notice has been given. If the third-party consents to disclosure, the
Disclosing Party shall produce the requested information in accordance with the terms of this
Protective Order, with the information designated as CONFIDENTIAL or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED CONFIDENTIAL –
OUTSIDE COUNSEL ONLY – PROSECUTION BAR, at the third party’s direction. If the
third party does not consent to disclosure of the confidential document or information under the
terms of this Protective Order, the Disclosing Party or the third party shall promptly move the
court for a protective order within in thirty days of notice. If no such motion is filed, the

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26

Disclosing Party shall produce the information under the terms of this Protective Order. This
Protective Order shall not preclude any party from moving the Court for an order compelling
production of such material.
23.

Advice to Client. Nothing in this Protective Order shall bar or otherwise restrict

counsel from rendering advice to his or her client with respect to this litigation and, in the course
thereof, relying in a general way upon his or her examination of CONFIDENTIAL or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or RESTRICTED
CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR materials produced
or exchanged in this litigation, provided, however, that in rendering such advice and in otherwise
communicating with his or her client, the attorney shall not disclose the contents of the
CONFIDENTIAL or RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY or
RESTRICTED CONFIDENTIAL – OUTSIDE COUNSEL ONLY – PROSECUTION BAR
materials.
24.

Continuing Obligations. This Protective Order, and all obligations and duties

arising under this Protective Order, shall remain in effect after the final termination of this
action, unless otherwise ordered by the Court. The parties agree that the Court shall retain
jurisdiction indefinitely over the parties, and any persons provided access to Designated
Materials under the terms of this Protective Order, with respect to any dispute over the improper
use of such Designated Materials and with respect to any orders permitting materials to be filed
and maintained under seal.
25.

Source Code. The parties agree that this Protective Order does not address the

production of source code (including source code and source code listings, object code and
object code listings, executable code and similar sensitive software code, whether in electronic or

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27

printed form). Should such source code be identified for production, the parties will negotiate
and request entry of a separate Protective Order governing the production of source code.
26.

Miscellaneous Provisions.
a.

Transmission by electronic mail is acceptable for all notification purposes

b.

The Protective Order has no effect upon, and its scope shall not extend to,

herein.

any party’s use of its own Designated Materials or other confidential information.

The Court has reviewed the reasons offered in support of entry of this Stipulated
Protective Order and finds that there is good cause to protect the confidential nature of certain
information. Accordingly, the Court adopts the above Stipulated Protective Order in this action.
SO ORDERED.
Signed: March 12, 2020

PROTECTIVE ORDER

28

“EXHIBIT A”
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
MOBILE TECH., INC. d/b/a
MOBILE TECHNOLOGIES INC.
and MTI,
Plaintiff,

CASE NO. 3:18-cv-00052-KDB-DSC
NOTICE OF ADHERANCE TO
PROTECTIVE ORDER

vs.
INVUE SECURITY PRODUCTS
INC.,
Defendant.

I, ______________________, in connection with the above-captioned lawsuit, hereby
acknowledge that I am to be provided access to designated materials supplied by other parties
and/or non-parties, as defined in the Stipulated Protective Order dated __________.
My address is ___________________________________________________________.
My present employer or the Party I have been retained by is ____________________________.
My present occupation or job description and title is ___________________________________.
Attached is a copy of my current resume or curriculum vitae (experts or consultants only).
I certify my understanding that the confidential information is being provided to me
pursuant to the terms and restrictions of the aforesaid Stipulated Protective Order and that I have
been given a copy of and have read and understood my obligations under that Stipulated
Protective Order. I hereby agree to be bound by the terms of the Stipulated Protective Order. I
understand that the confidential information and my copies or notes relating thereto may be
disclosed to or discussed with only those persons permitted by the Stipulated Protective Order to

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29

receive such information.
I will return or destroy on request all materials containing confidential information,
copies thereof and notes that I have prepared relating thereto, to outside counsel of record for the
party with whom I am associated.
I hereby submit to the jurisdiction of this Court for the purpose of enforcement of the
Stipulated Protective Order.

Dated: _______________

PROTECTIVE ORDER

By: ________________________________

30