Nichia Corporation v. Lowe's Companies, Inc. et al

Filing 61

STIPULATED PROTECTIVE ORDER re: 60 Joint Motion for Protective Order. Signed by Magistrate Judge David S. Cayer on 4/6/2018. (nvc)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
STATESVILLE DIVISION
CIVIL ACTION NO. 5:16-CV-142-MOC-DSC

Nichia Corporation,
Plaintiff,
v.
Lowe’s Companies, Inc., Lowe’s Home Centers,
LLC, and L G Sourcing, Inc.,

STIPULATED PROTECTIVE
ORDER

Defendants.

WHEREAS, Plaintiff Nichia Corporation (“Nichia”) and Defendants Lowe’s Companies
Inc., Lowe’s Home Centers, LLC, and L G Sourcing, Inc. (“Lowe’s”), hereafter referred to as
“the Parties,” believe that certain information that is or will be encompassed by discovery
demands by the Parties involves the production or disclosure of trade secrets, confidential
business information, or other proprietary information; and
WHEREAS, the Parties seek a protective order limiting disclosure thereof in accordance
with Federal Rule of Civil Procedure 26(c):
THEREFORE, it is hereby stipulated among the Parties and ORDERED that:
1.

Each Party may designate as confidential for protection under this Order, in whole

or in part, any document, information or material that constitutes or includes, in whole or in part,
confidential or proprietary information or trade secrets of the Party or a Third Party to whom the
Party reasonably believes it owes an obligation of confidentiality with respect to such document,
information or material (“Protected Material”). Protected Material shall be designated by the

Party producing it by affixing a legend or stamp on such document, information or material as
follows: “CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” The phrase “CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” shall be placed clearly on each page of the Protected Material.
2.

Any document produced under Patent Rules 2-2, 3-2, and/or 3-4 before issuance

of this Order, including any documents reproduced in these proceedings from other cases, with
the designation “Confidential” or “Confidential - Outside Attorneys’ Eyes Only” shall receive
the same treatment as if designated “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” under
this Order, unless and until such document is re-designated to have a different classification
under this Order.
3.

With respect to documents, information or material designated

“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” (“DESIGNATED MATERIAL”),1 subject
to the provisions herein and unless otherwise stated, this Order governs, without limitation: (a)
all documents, electronically stored information, and/or things as defined by the Federal Rules of
Civil Procedure; (b) all pretrial, hearing or deposition testimony, or documents marked as
exhibits or for identification in depositions and hearings; (c) pretrial pleadings, exhibits to
pleadings and other court filings; (d) affidavits; and (e) stipulations. All copies, reproductions,
extracts, digests and complete or partial summaries prepared from any DESIGNATED
MATERIAL shall also be considered DESIGNATED MATERIAL and treated as such under this
Order.
4.

A designation of Protected Material (i.e., “CONFIDENTIAL – ATTORNEYS’

EYES ONLY”) may be made at any time. Inadvertent or unintentional production of documents,
information or material that has not been designated as DESIGNATED MATERIAL shall not be

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The term DESIGNATED MATERIAL is used throughout this Protective Order to refer to the
class of materials designated as “CONFIDENTIAL – ATTORNEYS’ EYES ONLY.”

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deemed a waiver in whole or in part of a claim for confidential treatment. Any party that
inadvertently or unintentionally produces Protected Material without designating it as
DESIGNATED MATERIAL may request destruction of that Protected Material by notifying the
recipient(s), as soon as reasonably possible after the producing Party becomes aware of the
inadvertent or unintentional disclosure, and providing replacement Protected Material that is
properly designated. The recipient(s) shall then destroy all copies of the inadvertently or
unintentionally produced Protected Materials and any documents, information or material
derived from or based thereon. Designating Party shall, upon request of the Receiving Party,
specifically identify the confidential portions of any pleading or other document filed under seal
with the Court, written discovery response, or any exhibits thereto, or alternatively provide the
Receiving Party with a redacted non-confidential version thereof. The Designating Party shall
have five (5) business days to comply with such a request.
5.

“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” documents, information and

material may be disclosed only to the following persons, except upon receipt of the prior written
consent of the Designating Party, upon prior order of the Court, or as set forth in paragraph 11
herein:
(a)

outside counsel of record in this Action for the Parties;

(b)

employees of such counsel assigned to and reasonably necessary to assist

such counsel in the litigation of this Action;
(c)

outside consultants or experts (i.e., not existing employees or affiliates of a

Party or an affiliate of a Party) retained for the purpose of this litigation, provided that:
(1) such consultants or experts are not presently employed by the Parties hereto for
purposes other than this Action or by a known or identified competitor of any of the

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Parties; and (2) before access is given, the consultant or expert has completed the
Undertaking attached as Appendix A hereto and the same is served upon the producing
Party with a current curriculum vitae (or its available equivalent) of the consultant or
expert, and a list of all litigations and administrative proceedings in which he or she has
either written an expert report or given testimony at trial, a hearing, a deposition, or by
written submission in the previous five (5) years (the “Notice”). The Notice must be
received at least five business (5) days before access to the Protected Material is to be
given to that consultant, to provide an opportunity for the Producing Party to notify the
Receiving Party in writing that it objects to disclosure of Protected Material to the
consultant or expert. The Parties agree to promptly confer and use good faith to resolve
any such objection. If the Parties are unable to resolve any objection, the Party seeking to
disclose DESIGNATED MATERIAL may file a motion with the Court. The objecting
Party shall have the ultimate burden of proving that such disclosure is not appropriate.
No disclosure shall occur until all such objections are resolved by agreement or Court
order. Each outside consultant or expert to whom DESIGNATED MATERIAL is
disclosed in accordance with the terms of this Order shall be advised by counsel of the
terms of this Order, shall be informed that he or she is subject to the terms and conditions
of this Order, and shall sign an acknowledgment, attached as Appendix A hereto, that he
or she has received a copy of, has read, and has agreed to be bound by this Order;
(d)

independent litigation support services, including persons working for or

as court reporters, graphics or design services, jury or trial consulting services, and
photocopy, document imaging, and database services retained by counsel and reasonably
necessary to assist counsel with the litigation of this Action; and

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(e)
6.

the Court and its personnel.

A Party shall designate documents, information or material as “CONFIDENTIAL

– ATTORNEYS’ EYES ONLY” only upon a good faith belief that the documents, information
or material contains confidential or proprietary information or trade secrets of the Party or a
Third Party to whom the Party reasonably believes it owes an obligation of confidentiality with
respect to such documents, information or material.
7.

DESIGNATED MATERIAL shall be used by the Parties only in the litigation of

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

Any person associated with a Party who is permitted to receive the other Party’s

or a Third Party’s DESIGNATED MATERIAL, who obtains, receives, has access to, or
otherwise learns, in whole or in part, the other Party’s or a Third Party’s DESIGNATED
MATERIAL under this Order shall not prepare, prosecute, supervise, or assist in the preparation
or prosecution of any patent application or the amendment of any patent claim in any proceeding
whatsoever, excluding post-grant proceedings such as Inter Partes Review, pertaining to the
field of the invention of the patent-in-suit during the pendency of this Action and for one year
after its conclusion, including any appeals. To ensure compliance with the purpose of this
provision, each Party shall create an “Ethical Wall” between those persons with access to
DESIGNATED MATERIAL and any individuals who prepare, prosecute, supervise or assist in

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the preparation or prosecution of any patent application pertaining to the field of invention of the
patent-in-suit. For the avoidance of doubt, nothing in this provision shall preclude any person
who reviews or otherwise learns the contents of, in whole or in part, the other Party’s
DESIGNATED MATERIAL under this Order from participating in any post-grant proceeding,
such as Inter Partes Review, on behalf of an entity attempting to invalidate or defend the validity
of a patent. Nothing in this Section shall prevent any attorney from sending non-confidential
prior art to an attorney involved in patent prosecution for purposes of ensuring that such prior art
is submitted to the U.S. Patent and Trademark Office (or any similar agency of a foreign
government) to assist a patent applicant in complying with its duty of candor. The Parties
expressly agree that the Prosecution Bar set forth herein shall be personal to any attorney who
reviews DESIGNATED MATERIAL and shall not be imputed to any other persons or attorneys
at the attorneys’ law firm.
9.

Nothing in this Order shall require production of documents, information or other

material that a Party contends is protected from disclosure by the attorney-client privilege, the
work product doctrine, or other privilege, doctrine, or immunity. The production of privileged or
work-product protected documents, electronically stored information (“ESI”) or information,
whether inadvertent or otherwise, is not a waiver of the privilege or protection from discovery in
this case or in any other federal or state proceeding. This Order shall be interpreted to provide
the maximum protection allowed by Federal Rule of Evidence 502(d), and also applies to all
documents and materials produced prior to entry of this order. For the avoidance of doubt, the
provisions of this Paragraph 9 do not relieve the parties of their obligations to prepare a full and
accurate privilege log with respect to their document productions. Any Party that produces
documents, information or other material it reasonably believes are protected under the attorney-

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client privilege, work product doctrine, or other privilege or immunity may obtain the return of
such documents, information or other material by promptly notifying the recipient(s) of such
documents, information or other material and providing a privilege log for the documents,
information or other material within one week of such notification. The recipient(s) shall gather
and destroy all copies of such documents, information or other material and certify such to the
producing Party. For the avoidance of doubt, any such documents may not be used by the
Receiving Party for any purpose.
10.

There shall be no disclosure of any DESIGNATED MATERIAL by any person

authorized to have access thereto to any person who is not authorized for such access under this
Order. The Parties are hereby ORDERED to safeguard all such documents, information and
material to protect against disclosure to any unauthorized persons or entities.
11.

Nothing in this Order shall prevent or otherwise restrict counsel from rendering

advice to their clients and, in the course thereof, relying generally on their examination of
DESIGNATED MATERIAL; provided, however, that in rendering such advice and otherwise
communicating with such clients, counsel shall not make specific disclosure of any item so
designated except as permitted by this Order or by prior written agreement with opposing
counsel.
12.

Nothing contained herein shall be construed to prejudice any Party’s right to use

any DESIGNATED MATERIAL in taking testimony at any deposition or hearing provided that
the DESIGNATED MATERIAL is only disclosed to a person(s) who: (i) is eligible to have
access to the DESIGNATED MATERIAL by virtue of his or her employment with the
Designating Party, (ii) is identified in the DESIGNATED MATERIAL as an author, addressee,
or copy recipient of such information, (iii) although not identified as an author, addressee, or

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copy recipient of such DESIGNATED MATERIAL, has, in the ordinary course of business, seen
such DESIGNATED MATERIAL, (iv) is a current or former officer or director of the producing
Party or a current; (v) is outside counsel for a Party; (vi) is an independent contractor, consultant,
and/or expert retained for the purpose of this litigation who has complied with the provisions set
forth in Paragraph 5(c); (vii) are court reporters and videographers; (viii) is the Court; or (ix) are
other persons entitled hereunder to access to DESIGNATED MATERIAL. DESIGNATED
MATERIAL shall not be disclosed to any other persons unless prior authorization is obtained
from counsel representing the producing Party or from the Court.
13.

Parties may, at the deposition or hearing or within ten (10) days after receipt of a

deposition or hearing transcript, designate the deposition or hearing transcript or any portion
thereof as “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” pursuant to this Order. Access to
the deposition or hearing transcript so designated shall be limited in accordance with the terms of
this Order. Until expiration of the 10-day period, the entire deposition or hearing transcript shall
be treated as DESIGNATED MATERIAL.
14.

Any DESIGNATED MATERIAL that is filed with the Court shall be filed under

seal and shall remain under seal until further order of the Court. The filing party shall be
responsible for informing the Clerk of the Court that the filing should be sealed and for placing
the legend “FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER” above the caption
and conspicuously on each page of the filing. Exhibits to a filing shall conform to the labeling
requirements set forth in this Order. If a pretrial pleading filed with the Court, or an exhibit
thereto, discloses or relies on confidential documents, information or material, such confidential
portions shall be redacted to the extent necessary and the pleading or exhibit filed publicly with
the Court to the extent required by the Local Rules.

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15.

The Order applies to pretrial discovery. Prior to the introduction of any

DESIGNATED MATERIAL by a Party in a hearing, trial, or other proceeding, the Party seeking
to disclose DESIGNATED MATERIAL shall confer with the Designating Party, to the extent
that the Party seeking to disclose and the Designating Party differ. Any Party seeking to
preserve the confidentiality of the DESIGNATED MATERIAL may request that the Court
exclude from the courtroom any person who is not entitled under this Order to receive
DESIGNATED MATERIAL and/or may request that the transcript be marked appropriately.
16.

A Party may request in writing to the other Party that the designation given to any

DESIGNATED MATERIAL be modified or withdrawn. If the Designating Party does not agree
to re-designation within five (5) business days of receipt of the written request, the requesting
Party may apply to the Court for relief. Upon any such application to the Court, the burden shall
be on the Designating Party to show why its classification is proper. Pending the Court’s
determination of the application, the designation of the Designating Party shall be maintained.
17.

To the extent that any discovery is taken of persons who are not Parties to this

Action (“Third Parties”) and in the event that such Third Parties contend the discovery sought
involves trade secrets, confidential business information, or other proprietary information, then
such Third Parties may agree to be bound by this Order.
18.

To the extent that discovery or testimony is taken of Third Parties, the Third

Parties may designate as “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” any documents,
information or other material, in whole or in part, produced or given by such Third Parties. The
provisions of this Order regarding the designating of materials shall govern Third Parties
agreeing to be bound by this Order.

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19.

If a Third Party, court, or administrative agency subpoenas, orders, or requests

pursuant to Fed. R. Civ. P. 34 (or equivalent rule) production of DESIGNATED MATERIAL
that a Party has obtained under the terms of this Order, such Party shall promptly and in any case
within five (5) business days of receipt of such subpoena, order, or request (but in no event later
than the time for production of such material) give written notice to counsel for the Designating
Party, identifying the DESIGNATED MATERIAL sought and enclosing a copy of the subpoena,
order, or request. The Receiving Party shall not produce the DESIGNATED MATERIAL for at
least five (5) business days after providing the required notice to the Designating Party. If,
within five (5) business days of receiving such notice, the Designating Party provides written
notice to the Receiving Party that it opposes production of its DESIGNATED MATERIAL, the
Receiving Party shall not thereafter produce such DESIGNATED MATERIAL, except pursuant
to a court order or other order that subjects the Receiving Party to penalties for noncompliance.
The Receiving Party shall be solely responsible for asserting any objection to the requested or
required production. Nothing herein shall be construed as requiring the Receiving Party or
anyone else covered by this order to object to, challenge, or appeal any such subpoena, order, or
request seeking or requiring production, subject itself to penalties for noncompliance, or seek
any relief from any court or administrative agency.
20.

Within thirty (30) days of final termination of this Action, including any appeals,

all DESIGNATED MATERIAL, including all copies, duplicates, abstracts, indexes, summaries,
descriptions, and excerpts or extracts thereof (excluding excerpts or extracts incorporated into
any privileged memoranda of the Parties and materials which have been admitted into evidence
in this Action), shall at the producing Party’s election either be returned to the producing Party or
be destroyed. The Receiving Party shall verify the return or destruction by affidavit furnished to

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the producing Party, upon the producing Party’s request. Notwithstanding the foregoing, outside
counsel for the Parties are permitted to retain one (1) working copy of all pleadings and
discovery containing any DESIGNATED MATERIAL.
21.

The failure to designate documents, information or material in accordance with

this Order and the failure to object to a designation at a given time shall not preclude the filing of
a motion at a later date seeking to impose such designation or challenging the propriety thereof.
The entry of this Order and/or the production of documents, information and material hereunder
shall in no way constitute a waiver of any objection to the furnishing thereof, all such objections
being hereby preserved.
22.

This Order is binding on all Parties to this action, any persons who receive

DESIGNATED MATERIAL, and all non-parties who elect the protections of this Order, and
shall survive any settlement, discontinuance, stay, dismissal, judgment, or other disposition of
this action. This Order shall remain in force and effect until modified, superseded, or terminated
by further order of the Court.
23.

Any Party knowing or believing that any other party is in violation of or intends

to violate this Order and has raised the question of violation or potential violation with the
opposing party and has been unable to resolve the matter by agreement may move the Court for
such relief as may be appropriate in the circumstances. Pending disposition of the motion by the
Court, the Party alleged to be in violation of or intending to violate this Order shall discontinue
the performance of and/or shall not undertake the further performance of any action alleged to
constitute a violation of this Order.
24.

Production of DESIGNATED MATERIAL by each of the Parties shall not be

deemed a publication of the documents, information and material (or the contents thereof)

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produced so as to void or make voidable whatever claim the Parties may have as to the
proprietary and confidential nature of the documents, information or other material or its
contents.
25.

Nothing in this Order shall be construed to effect an abrogation, waiver or

limitation of any kind on the rights of each of the Parties to assert any applicable discovery or
trial privilege.
26.

Each of the Parties shall also retain the right to file a motion with the Court (a) to

modify this Order to allow disclosure of DESIGNATED MATERIAL to additional persons or
entities if reasonably necessary to prepare and present this Action and (b) to apply for additional
protection of DESIGNATED MATERIAL.
SO ORDERED.

Signed: April 6, 2018

IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD:
THE VAN WINKLE LAW FIRM

RAYBURN COOPER & DURHAM, P.A.

/s/ Larry S. McDevitt
Larry S. McDevitt
David M. Wilkerson
[e-mail]
[e-mail]
11 North Market Street
Asheville, NC 28801
Telephone: [phone]
Fax: [phone]

/s/ James B. Gatehouse
James B. Gatehouse
(N.C. Bar No. 22811)
227 W. Trade St. Suite 1200
Charlotte, NC 28202-1672
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

Kenneth A. Gallo
[e-mail]
David E. Cole
[e-mail]

SILL CUMMIS & GROSS P.C.
Trent S. Dickey (Pro Hac Vice)
Scott D. Stimpson (Pro Hac Vice)
Tod M. Melgar (Pro Hac Vice)
101 Park Avenue, 28th Floor
New York, NY 10178

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PAUL, WEISS, RIFKIND,
WHARTON & GARRISON LLP
2001 K Street, NW
Washington, DC 20006-1047
Telephone: [phone]
Fax: [phone]

Tel. [phone]
Fax [phone]
[e-mail]
[e-mail]

Attorneys for Defendants Lowe’s
Companies, Inc., Lowe’s Home Centers,
LLC, and L G Sourcing, Inc.

Catherine Nyarady
[e-mail]
Daniel J. Klein
[e-mail]
PAUL, WEISS, RIFKIND,
WHARTON & GARRISON LLP
1285 Avenue of the Americas
New York, NY 10019-6064
Telephone: [phone]
Fax: [phone]
Attorneys for Plaintiff
Nichia Corporation

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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
STATESVILLE DIVISION
CIVIL ACTION NO. 5:16-CV-142

Nichia Corporation,
Plaintiff,
v.
Lowe’s Companies, Inc., Lowe’s Home Centers,
LLC, and L G Sourcing, Inc.,
Defendants.

APPENDIX A
UNDERTAKING OF EXPERTS OR CONSULTANTS
REGARDING PROTECTIVE ORDER
I, ___________________________ declare that:
1. My address is ______________________
2. My current employer is ________________
3. My current occupation is ________________
4. I have received a copy of the Protective Order in this action. I have carefully read
and understand the provisions of the Protective Order.
5. I will comply with all of the provisions of the Protective Order. I will hold in
confidence, will not disclose to anyone not qualified under the Protective Order, and will use
only for purposes of this action any information designated as “CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” that is disclosed to me.

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6. Promptly upon termination of these actions, I will return all documents and things
designated as “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” that came into my
possession, and all documents and things that I have prepared relating thereto, to the outside
counsel for the party by whom I am employed.
7. I hereby submit to the jurisdiction of this Court for the purpose of enforcement of
the Protective Order in this Action.
I declare under penalty of perjury that the forgoing is true and correct.
Signature ________________________________
Date: ______________________________

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