Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al

Filing 240

Agreed MOTION for Protective Order by Uniloc Singapore Private Limited, Uniloc USA, Inc.. (Attachments: # 1 Text of Proposed Order)(Nelson, Edward)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.

CASE NO. 6:10-CV-373
PATENT CASE

SONY CORPORATION OF AMERICA,
ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-471
PATENT CASE

vs.
DISK DOCTORS LABS, INC., ETAL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.

CASE NO. 6:10-CV-472
PATENT CASE

NATIONAL INSTRUMENTS CORP., ET
AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-591
PATENT CASE

vs.
ENGRASP,INC., ET AL.
Defendants.

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UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-636
PATENT CASE

vs.
BMC SOFTWARE, INC., ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-691
PATENT CASE

vs.
FOXIT CORPORATION, ET AL.
Defendants.

SYMANTEC CORPORATION, ET AL.
Plaintiffs,
CASE NO. 6:11-CV-33
PATENT CASE

vs.
UNILOC USA, INC., ET AL.
Defendants.

STIPULATED PROTECTIVE ORDER
The parties agree that certain information subject to discovery in this action may contain
trade secrets or other confidential, proprietary and/or commercially sensitive information. In the
interest of protecting that information and permitting discovery to proceed without delay
occasioned by disputes regarding such information, the parties agree to the protective provisions
set forth below. In view of these stipulations, and good cause appearing, the Court enters this
Protective Order pursuant to Federal Rule of Civil Procedure 26(c).
IT IS HEREBY ORDERED:
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Scope and Definitions
1.

This Protective Order applies to all information, documents, testimony and/or things

discovered in this action which contain non-public, confidential information and/or trade secrets,
as well as any secondary material, such as pleadings, written discovery, expert reports, notes,
summaries or any other materials that contain, describe or reflect such information (collectively,
“Protected Material”).
2.

“Producing Party” shall refer to any person that discloses, testifies regarding, produces or

makes available for inspection any Protected Material. A Producing Party may be a party to this
action or a non-party, and may disclose Protected Material either voluntarily or involuntarily.
3.

“Receiving Party” shall refer to any party to this action which receives Protected Material

under this Order, and to any other entity or person authorized to receive Protected Material under
Paragraph 13 (CONFIDENTIAL Material), Paragraph 14 (CONFIDENTIAL - OUTSIDE
ATTORNEYS EYES ONLY Material), and Paragraphs 15 and 20 (“SOURCE CODE –
OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED CONFIDENTIAL” Material).
4.

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

consultants, retained experts, and outside counsel and their support staffs.
5.

“Source Code” means computer code, scripts, assembly, object code, source code listings

and descriptions of source code, object code listings and descriptions of object code, and
Hardware Description Language (HDL) or Register Transfer Level (RTL) files that describe the
hardware design of any ASIC or other chip, any of which are disclosed by a Producing Party.
6.

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

a Party, (ii) partners and associates of such counsel to whom it is reasonably necessary to
disclose the information for this litigation, and (iii) outside, independent attorneys contracted to
provide legal advice to a Party in connection with this litigation, who have qualified under
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Paragraphs 16, 18 and 19 of this Order. Outside counsel may not be an officer, director, or
managing agent of a Party or of a competitor of a Party and may not be 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.
7.

To the extent that any discovery is taken of persons not Parties to this action (“Third

Parties”) and if 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.
8.

A Producing Party may designate Protected Material as:
a.

“CONFIDENTIAL” if it contains information not readily available to the public
and which the Producing Party would not reveal to others except in confidence; or

b.

“CONFIDENTIAL - OUTSIDE ATTORNEYS EYES ONLY” if it:
i.

contains or describes non-public technical, financial, or other trade secrets
or commercially sensitive information, including without limitation pricing,
customer lists, business or marketing plans, or

ii.

is subject to an express obligation of confidentiality owed by the Producing
Party to a third party which prevents its disclosure otherwise; or

iii.

is a license agreement to the extent it does not involve settlements or
licenses related to the patents asserted in this litigation (unless expressly
requiring a higher level of confidentiality, settlement agreements and
licenses involving the patents asserted in this litigation may be marked
“CONFIDENTIAL” and may be accessed by in-house counsel of the
parties as provided below; however, if such agreements or licenses require a
higher level of confidentiality, Plaintiffs agree that they will not object to
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such agreements or licenses being produced on a “CONFIDENTIAL” basis,
provided that the other party to any such agreement or license also agrees
that it can be produced on a “CONFIDENTIAL” basis; or
c.

“SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” for the source code produced by a Producing Party. Source
code shall be subject to the additional restrictions and protections provided below.

9.

To the extent that any one of Defendants in this litigation produces Protected Material

(including third party Protected Material in the possession of a Defendant) under the terms of
this Protective Order to Plaintiff, Plaintiff shall not share that material with the other Defendants
in this litigation, absent express written permission from the producing Defendant. This Order
does not confer any right to any one Defendant to access the Protected Material of any other
Defendant (including third party Protected Material in its possession), except that any document
served on any party in this case must be served on Outside Counsel for all parties in this case,
subject to redaction of Protected Material.
Permitted Use of Protected Material
10.

Protected Material shall not be distributed, disclosed or made available to anyone except

as expressly provided in this Order.
11.

Protected Material shall be used solely for this litigation, and shall not be used for any

other purpose, including without limitation any other litigation, or acquisition, or any business or
competitive purpose or function of any kind.
12.

No Defendant is required to produce its Protected Material to any other Defendant or

Defendants, but nothing in this Order shall preclude such production. Notwithstanding the
provisions of this Protective Order, and with the exception of service copies pursuant to
Paragraph 9, Plaintiff shall not disclose one Defendant’s Protected Material to any other
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Defendant or Defendants through Court filings, oral argument in Court, expert reports,
deposition, discovery requests, discovery responses, or any other means, without the express
prior written consent of the Defendant that produced the Protected Material. Plaintiff is not in
violation of this provision when it discloses Protected Material for one Defendant to that
Defendant’s Outside Counsel who also represents other Defendants.
Permitted Disclosure and Persons Who May Access Protected Material
13.

A Receiving Party may disclose Protected Material designated “CONFIDENTIAL” only

to the following:
a.

Any Persons authorized to receive “CONFIDENTIAL - OUTSIDE
ATTORNEYS EYES ONLY” material as specified in Paragraph 14 below;

b.

Up to five (5) employees or officers of the Receiving Party provided, however,
that each employee and/or officer agrees to be bound by the provisions of this
Protective Order and signs the undertaking set forth in Exhibit A prior to receipt
of the Protected Material; and

c.

In-house counsel of the Receiving Party to which disclosure is reasonably
necessary for this litigation.

14.

A Receiving Party may disclose materials designated “CONFIDENTIAL - OUTSIDE

ATTORNEYS EYES ONLY” material only to the following:
a.

The Court, its technical advisor and/or mediator, court personnel, the jury, court
reporters and/or videographers who record testimony or other proceedings in this
action;

b.

Outside Counsel for the Receiving Party (including the non-attorney employees of
their respective law firms under Outside Counsel’s control);

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c.

Persons who appear on the face of the Protected Material as an author, addressee
or recipient, or as the original source of the information contained therein.
Persons authorized to view Protected Material only under this subparagraph shall
not retain copies of the Protected Material;

d.

Outside experts and consultants of the Receiving Party, subject to Paragraphs 1719, and their support staff and clerical employees assisting in the litigation,
provided that any such persons may not be a current officer, director, or employee
of a Party or of a competitor of a Party and may not be 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;

e.

Professional litigation support vendors, including but not limited to copy,
graphics, translation, database and/or trial support and/or trial consulting services;
and

f.

While testifying at deposition or trial in this action only:
i.

any current or former officer, director or employee of the Producing Party
or the original source of the information;

ii.

any person designated by the Producing Party to provide testimony under
Rule 30(b)(6) of the Federal Rules of Civil Procedure where the category or
categories of designation reasonably relate to the subject matter of the
Protected Materials to be disclosed;

iii.

any person who authored, previously received or was likely accorded
access to such Protected Material, as evident from its face or reasonably
certain in view of other evidence; and

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g.

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.

h.

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

i.

In addition, a Party may disclose arguments and materials derived from Protected
Material designated “CONFIDENTIAL - OUTSIDE ATTORNEYS EYES
ONLY” to mock jurors who have signed Exhibit A. 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 - OUTSIDE ATTORNEYS
EYES ONLY”.

15.

A Receiving Party may disclose materials designated “SOURCE CODE – OUTSIDE

ATTORNEYS EYES ONLY – RESTRICTED CONFIDENTIAL” only to the following:
a.

The Court, its technical advisor and/or mediator, court personnel, the jury, court
reporters and/or videographers who record testimony or other proceedings in this
action.

b.

Outside Counsel for the Receiving Party (including the non-attorney employees of
their respective law firms under outside counsel’s control), except that, unless
otherwise agreed, no Outside Counsel who is involved in competitive decisionmaking, as defined by U.S. Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed.
Cir. 1984), shall have access to Protected Material designated as “SOURCE
CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL”.

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c.

Outside experts and consultants retained by the Receiving Party to assist in this
action and their support staff and clerical employees assisting in the litigation,
subject to paragraphs 17-19 of this Order, provided that disclosure is only to the
extent necessary to perform such work, and (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 decisionmaking, 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) no unresolved
objections to such disclosure exist after proper notice has been given to all Parties
as set forth in Paragraph 17 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 “SOURCE CODE –
OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED CONFIDENTIAL”
Protected Material produced by another Defendant in this matter;

d.

Witnesses at deposition and/or trial affiliated with the Source Code for the
Producing Party, provided that such witnesses may not retain copies of Source
Code unless permitted by other provisions of this Order;

e.

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

f.

Any other person with the prior written consent of the Producing Party.
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Disclosure of Protected Material to Outside Counsel Not Appearing in the Action
16.

Prior to disclosing a Producing Party’s “CONFIDENTIAL - OUTSIDE ATTORNEYS

EYES ONLY” or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” material to an outside attorney who is not Outside Counsel as defined in
paragraph 6, a Receiving Party shall provide written notice to the Producing Party that it intends
to disclose such material to the outside attorney, including:
a.

the name of the outside attorney to which the Receiving Party intends to transmit
the information (the “Proposed Recipient”);

b.

the name of the Proposed Recipient’s firm; and

c.

a copy of Exhibit A signed by the Proposed Recipient.

No Receiving Party shall provide any such “CONFIDENTIAL - OUTSIDE ATTORNEYS
EYES ONLY” or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” material to the outside attorney during the objection period of Paragraph 18,
or while any such objection is unresolved under Paragraph 19.
Disclosure of Protected Material to Outside Experts and Consultants
17.

Prior to disclosing a Producing Party’s “CONFIDENTIAL - OUTSIDE ATTORNEYS

EYES ONLY” or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” material to any outside expert or consultant, a Receiving Party shall provide
written notice to each Producing Party that has produced or may produce such material the
Receiving Party intends to disclose to the outside expert or consultant, including:
a.

the name of the outside expert or consultant to which the Receiving Party intends
to transmit the information (the “Proposed Recipient”);

b.

the present employer and title of the Proposed Recipient;

c.

an up-to-date curriculum vitae for the Proposed Recipient;
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d.

a list of all publications authored by the Proposed Recipient for the last ten (10)
years;

e.

a list of current and past employment and consulting relationships undertaken by
the Proposed Recipient for the last five (5) years, including direct relationships
and relationships through entities owned or controlled by the Proposed Recipient;

f.

a list of all other cases in which, during the previous five (5) years, the expert or
consultant testified, whether at trial or by deposition; and

g.

a copy of Exhibit A signed by the Proposed Recipient.

No Receiving Party shall provide any “CONFIDENTIAL - OUTSIDE ATTORNEYS EYES
ONLY” or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” material to the outside expert or consultant during the objection period of
Paragraph 18, or until any such objection is resolved under Paragraph 19.
18.

Within seven (7) business days of receiving the information in Paragraphs 16 or 17

regarding a Proposed Recipient, a Producing Party may for good cause object in writing to its
disclosure to the Proposed Recipient. The objection cannot be unreasonable. The seven (7)
business day objection period does not begin to run until the Receiving Party provides the
Producing Party with all of the above information, and the Source Code is not accessible until
the proposed Recipient is approved. In the absence of any objection by the end of this period,
the Proposed Recipient shall be deemed approved to receive “CONFIDENTIAL - OUTSIDE
ATTORNEYS EYES ONLY” or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY –
RESTRICTED CONFIDENTIAL” information (as applicable) under this Protective Order from
all Producing Parties which received notifications under Paragraphs 16 or 17 above.
19.

If an objection is made under Paragraph 18 above, the parties affected shall meet and

confer within three (3) business days following such objection to attempt in good faith to resolve
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the dispute informally. If the dispute is not resolved, the party seeking the disclosure shall seek
relief from the Court no later than seven (7) business days following its objection under
Paragraph 18. If relief is not sought from the Court within this time, the objection stands and the
Proposed Recipient shall not receive “CONFIDENTIAL - OUTSIDE ATTORNEYS EYES
ONLY” and/or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” information respectively under this Protective Order from the Producing
Party which had objected under Paragraph 18 above.
Disclosure and Review of Source Code
20.

To the extent a Producing Party’s Source Code is discoverable in this action, it may be

designated as “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” and, in addition to the protections of paragraph 14-19, shall be subject to the
following additional restrictions and protections:
a.

Source code in electronic format shall be made available for inspection in native
format on a standalone computer (the “Source Code Computer”) in a secure room
(the “Source Code Review Room”) at one of the following locations at the
election of the Producing Party: (i) any office of the Producing Party’s outside
counsel in Texas, (ii) any place of business of the Producing Party in Texas, or
(iii) if mutually agreed to, any other location.

b.

Source Code will be produced so that it can be reviewed as it is kept in the normal
course of business in its native format reviewable with developer’s tools. This
means in source code files (.c, .cpp,.cs,.java, etc., depending on the programming
language used), in the same files and directories as the source code is kept in the
normal course of business so that a reviewer is able to use the Source Code
review tools to determine what functions call what other functions, and to step
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through it line by line. Alternatively, at the option of the Producing Party, Source
Code may be produced in encrypted media and the Receiving Party shall copy the
Source Code from the encrypted media to the standalone Source Code Computer,
which shall be maintained at its Outside Counsel offices following the restrictions
in paragraphs 16-20 with the exception of the notification provisions for gaining
access to the inspection location.
c.

Unless a Producing Party chooses to disclose Source Code prior to request from
the Receiving Party, the Receiving Party shall provide ten (10) business days
notice of the Source Code that it wishes to inspect prior to the first inspection of
any Source Code.

d.

Once the Producing Party has initially produced the Source Code for inspection
and review, it shall make it available for additional inspection upon three (3)
business days notice and, to the extent shorter notice is provided, the Producing
Party agrees to use reasonable efforts to accommodate the Receiving Party’s
request. The Producing Party and the Receiving Party shall consult with one
another in advance regarding particular Source Code review tools to be installed
on the computer. The Producing Party agrees to make review tools available on
the Source Code Computer to the Receiving Party upon reasonable request,
including free tools downloadable from the internet (such as Visual Studio
Express tools). If the requested review tools must be purchased, the Receiving
Party shall be responsible for bearing the cost and for providing the installation
files at least seven (7) business days in advance of the date upon which the
Receiving Party wishes to have the requested review tools available for use on the
Source Code Computer.
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e.

No recordable media or recordable devices, including without limitation sound
recorders, computers, cellular telephones, peripheral equipment, cameras, CDs,
DVDs, or drives of any kind, shall be permitted into the Source Code Review
Room. The Receiving Party’s expert(s) and/or consultant(s) may use a single
computer in the review room for the sole purpose of taking and reviewing his or
her notes. However, the Receiving Party's expert (s) and/or consultant(s) may not
copy any portion of the Source Code on the computer. Further, the computer shall
be non-networked, shall not be connected to the Internet, and shall have all
input/output connections disabled while taking notes or when present in the
Source Code Review Room. The taking of photographs or video shall not be
permitted in the Source Code Review Room.

f.

Under no circumstances is the Source Code to be copied or transmitted in
electronic form without the prior authorization of the Producing Party, except as
otherwise provided herein. The Producing Party may enforce reasonable
restrictions on the review of source code in electronic format, including making
source code available on a stand-alone, non-networked computer, with
input/output connections disabled such that source code cannot be removed,
copied, or otherwise transferred from the Source Code Computer and the Source
Code Computer cannot be connected to the internet.

g.

The Receiving Party’s expert(s) and/or consultant(s) may take notes relating to
the Source Code, but may not copy the Source Code into the notes and may not
take such notes electronically on the Source Code Computer itself.

h.

The Producing Party may visually monitor the activities of the Receiving Party’s
representatives during any Source Code review, but only to ensure that no
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unauthorized electronic records of the Source Code are being created or
transmitted in any way. Any observer used by the Producing Party shall be a
reasonable distance away from the Receiving Party’s representatives during the
Source Code review so as to refrain from overhearing a whispered conversation
(in order that the Receiving Party’s representatives can quietly discuss the Source
Code in the course of their review).
i.

The Receiving Party shall identify all experts or consultants it requests be allowed
to obtain access to the source code (“Proposed Recipient”) at least seven (7)
business days prior to any inspection, to permit the Producing Party time to
object. The Receiving Party, as part of the identification procedure, shall provide
the Producing Party with the information set forth in paragraph 17. The outside
counsel for the Receiving Party retaining the expert or consultant shall also retain
the expert or consultant executed Exhibit A in its files.

j.

No copies of all or any portion of the Source Code may leave the Source Code
Review Room except as otherwise provided herein. Further, no other written or
electronic record of the Source Code is permitted except as otherwise provided
herein. The Receiving Party may request certain portions of the Producing
Party’s Source Code be printed to paper copies by identifying such portions to the
Receiving Party. The Receiving Party shall not request printed copies of the
Source Code in order to review blocks of Source Code elsewhere in the first
instance, i.e., as an alternative to reviewing that Source Code electronically on the
Source Code Computer, as the Parties acknowledge and agree that the purpose of
the protections herein would be frustrated by printing portions of code for review
and analysis elsewhere, and that the Producing Party shall be required to print
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Source Code only when absolutely and directly necessary to prepare court filings
or pleadings or other papers (including formal infringement contentions and a
testifying expert’s expert report). Within four (4) business days of a request, the
Producing Party shall either (i) produce one copy set of the requested pages to the
Receiving Party, or (ii) inform the Requesting Party that it objects to the request
as excessive or not submitted for a permitted purpose. If, after meeting and
conferring, the Producing Party and the Receiving Party cannot resolve the
objection, the Receiving Party shall be entitled to seek a Court resolution of
whether the request is narrowly tailored and for a permitted purpose. The burden
shall be on the Receiving Party to demonstrate that such printed portions are
reasonably necessary for a permitted purpose. The Producing Party will affix the
proper Bates labeling and “SOURCE CODE – OUTSIDE ATTORNEYS EYES
ONLY – RESTRICTED CONFIDENTIAL” confidentiality designation to any
printed copies to be produced to the Receiving Party.
k.

All persons viewing Source Code in the Source Code Review Room shall sign on
each day they view Source Code a log, if provided, that will include the names of
persons who enter the Source Code Review Room to view the Source Code and
when they enter and depart.

l.

Unless otherwise agreed in advance by the Parties in writing, following each day
on which inspection is done under this Order, the Receiving Party’s outside
counsel and/or experts shall remove all notes, documents, and all other materials
from the Source Code Review Room. The Producing Party shall not be responsible
for any items left in the room following each inspection session, and the
Receiving Party shall have no expectation of confidentiality for any items left in
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the room following each inspection session without a prior agreement to that
effect.
m.

The Receiving Party will not print, copy, remove, or otherwise transfer any
Source Code from the Source Code Computer including, without limitation,
copying, removing, or transferring the Source Code onto any recordable media or
recordable device. The Receiving Party will not transmit any Source Code in any
way from the Source Code Review Room.

n.

The Receiving Party’s outside counsel of record and any person receiving a copy
of any Source Code shall maintain and store any paper copies of the Source Code
at their offices in a manner that prevents duplication of or unauthorized access to
the Source Code, including, without limitation, storing the Source Code in a
locked room or cabinet at all times when it is not in use.

o.

The Receiving Party’s outside counsel of record may make no more than three (3)
additional paper copies of any portions of the Source Code received from a
Producing Party pursuant to Paragraph 20.j above, not including copies attached
to court filings, and shall maintain a log of all paper copies of the Source Code.
The log shall include the names of the reviewers and/or recipients of paper copies
and locations where the paper copies are stored. Upon seven (7) business day’s
advance notice to the Receiving Party by the Producing Party, the Receiving Party
shall provide a copy of this log to the Producing Party.

p.

For depositions, copies of Source Code that are marked as deposition exhibits
shall not be provided to the Court Reporter or attached to deposition transcripts;
rather, the deposition record will identify the exhibit by its production numbers.

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All paper copies of Source Code brought to the deposition shall be securely
destroyed in a timely manner following the deposition.
Except as provided in this paragraph, absent express written permission from the Producing
Party, the Receiving Party may not create electronic images, or any other images, or make
electronic copies, of the Source Code from any paper copy of Source Code for use in any manner
(including by way of example only, the Receiving Party may not scan the Source Code to a PDF
or photograph the code). Images or copies of Source Code shall not be included in
correspondence between the Parties (references to production numbers shall be used instead),
and shall be omitted from pleadings and other papers whenever possible. If a Party reasonably
believes that it needs to submit a portion of Source Code as part of a filing with the Court, the
Parties shall meet and confer as to how to make such a filing while protecting the confidentiality
of the Source Code and such filing will not be made absent (i) agreement from the Producing
Party that the confidentiality protections will be adequate, or (ii) Court order. If a Producing
Party agrees to produce an electronic copy of all or any portion of its Source Code or provide
written permission to the Receiving Party that an electronic or any other copy needs to be made
for a Court filing, the Receiving Party’s communication and/or disclosure of electronic files or
other materials containing any portion of Source Code (paper or electronic) shall at all times be
limited solely to individuals who are expressly authorized to view Source Code under the
provisions of this Order. Where the Producing Party has provided the express written permission
required under this provision for a Receiving Party to create electronic copies of Source Code,
the Receiving Party shall maintain a log of all such electronic copies of any portion of Source
Code in its possession or in the possession of its retained consultants, including the names of the
reviewers and/or recipients of any such electronic copies, and the locations where the electronic
copies are stored. Additionally, any such electronic copies must be labeled “SOURCE CODE –
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OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED CONFIDENTIAL” as provided for in
this Order.
Prosecution Bar
21.

Absent written consent from the Producing Party, any individual who receives access to

“OUTSIDE ATTORNEYS’ EYES ONLY” or “SOURCE CODE – OUTSIDE ATTORNEYS
EYES ONLY – RESTRICTED CONFIDENTIAL” information shall not be involved in the
prosecution of patents or patent applications relating to technology that is the subject of the
accessed information, including without limitation the technical subject matter of patents
asserted in this action and any patent or application claiming priority to or otherwise related to
the patents asserted in this action, before any foreign or domestic agency, including the United
States Patent and Trademark Office (“the Patent Office”). For purposes of this paragraph,
“prosecution” means directly or indirectly drafting, amending, advising, or otherwise affecting
the scope or maintenance of patent claims. To avoid any doubt, “prosecution” as used in this
paragraph does not include representing a party before a domestic or foreign agency in
connection with a reissue protest, ex parte reexamination, or inter partes reexamination; though,
in connection with any such reissue protest, ex parte reexamination, or inter partes reexamination
involving the patent-in-suit, Outside Counsel for Plaintiffs shall not: (i) prosecute the
reexamination (in other words, serve as the prosecuting reexamination counsel); (ii) reveal any
Defendant’s Protected Material to any prosecuting reexamination counsel or agent; or (3)
consistent with Paragraph 11 herein, use any Defendant’s Protected Material for any purpose
other than this litigation. This Prosecution Bar shall begin when access to “ATTORNEYS’
EYES ONLY” or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” information is first received by the affected individual and shall end two (2)
years after the settlement and dismissal of the Producing Party from this action or the final non- 19 -

appealable termination of this action. No other provision of this protective order shall be
construed as invoking a prosecution bar or prohibiting any acts taken to discharge the duty of
candor and good faith.
Making and Challenging Designations
22.

A Producing Party designating Protected Material shall limit such designations to

material that it believes in good faith meets the applicable standards in Paragraph 8 above.
23.

A Producing Party shall designate Protected Material in substantially the following

manner:
a.

The Producing Party may designate documents or written discovery responses by
affixing the legend “CONFIDENTIAL” or “CONFIDENTIAL - OUTSIDE
ATTORNEYS EYES ONLY” on each page that contains Protected Material.
“SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” Protected Material must be designated in accordance with
Paragraphs 14-19.

b.

Documents made available for inspection need not be designated in advance and
shall be treated as “CONFIDENTIAL - OUTSIDE ATTORNEYS EYES ONLY”
until the Producing Party provides copies of documents identified by the
inspecting party for production affixed with the appropriate legend.

c.

Parties may at a deposition or hearing or up to fourteen (14) business days after a
deposition or hearing designate the depositions or hearing, or portions thereof, as
Protected Material pursuant to this Order. If discovery or testimony is taken of
Third Parties, the Third Parties may also make the same designations at a
deposition or hearing or up to fourteen (14) business days after a deposition or
hearing. The party making the designation shall make arrangements with the
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court reporter to label the relevant pages with the appropriate designation. Video
or DVD versions of the depositions will automatically have the same designation
as the transcript. Access to the deposition or hearing transcript so designated shall
be limited in accordance with the terms of this Order. Until expiration of the 14business day period, the entire deposition or hearing transcript shall be treated as
“CONFIDENTIAL - OUTSIDE ATTORNEYS EYES ONLY.” The Producing
Party may cure such failure in accordance with Paragraph 24.
d.

A Producing Party shall affix the appropriate legend prominently on any tangible
thing or media, or on the exterior of any case or container in which the
information or item is stored. To ensure the security of “CONFIDENTIAL” and
“CONFIDENTIAL - OUTSIDE ATTORNEYS EYES ONLY” information
produced in electronic form, the Producing Party may produce such documents in
TIFF or PDF formats. A Producing Party may designate any other Protected
Material not in documentary, tangible or physical form by informing the
Receiving Party of the designation in writing at or before the time of production
or inspection.

24.

Inadvertent failure to designate Protected Material does not waive a Producing Party’s

right to secure the protections of this Order.
a.

The Producing Party must notify the Receiving Party in writing promptly upon
the discovery of the inadvertent failure to designate and take whatever steps are
necessary to replace the documents with documents containing the appropriate
legends or otherwise designate the materials as set forth above.

b.

Upon receiving the written notice, the Receiving Party shall promptly make all
reasonable efforts to assure that the material is treated in accordance with the
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corrected designation, including seeking the retrieval or destruction of any copies
distributed to unauthorized individuals; and destroy copies of documents that have
been replaced with documents containing the proper designation.
c.

The Receiving Party shall not be held in violation of this Order for any otherwise
permissible disclosures made before receipt of such notice.

25.

At any time, a Receiving Party may challenge the propriety of the designation on

Protected Materials by providing the Producing Party written notice identifying the documents or
information that it contends should be designated differently. The Receiving Party challenging
the propriety of the designation and the Producing Party which designated the Protected Material
shall meet and confer in an attempt to resolve any such disputes promptly and informally. If they
cannot reach agreement, either party may follow the Court’s rules governing discovery disputes
to request that the Court affirm, cancel or modify the designation. On any such request to the
Court, the Receiving Party shall bear the burden of establishing good cause to establish that the
Producing Party incorrectly classified the Protected Material. Until the Court rules otherwise,
the Producing Party’s designation of the Protected Material remains in effect and is fully
enforceable under this Order.
26.

Information does not qualify for protection under this Order, and none of its provisions

apply to, material that:
a.

is available to the general public at the time of its production, or becomes
available to the general public after its production through no fault of a Receiving
Party;

b.

was independently and legally obtained by a Receiving Party from any other
person or party having no obligation of confidentiality and the right to make such
disclosure; or
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c.

was previously produced, disclosed or provided by the Producing Party to the
Receiving Party without an obligation of confidentiality, except for materials
covered under Paragraph 24 inadvertent disclosure.

Inadvertent Production of Privileged Documents
27.

The inadvertent production of documents or other material subject to the attorney-client

privilege, work product doctrine or any other privilege or immunity does not constitute a waiver
of any applicable privilege.
a.

Promptly upon learning of the inadvertent disclosure, the Producing Party must
notify the Receiving Party of the inadvertent production, provide the basis for the
asserted privilege(s), and request return of the documents.

b.

The Receiving Party must promptly return or confirm destruction of all copies of
such materials; but doing so shall not preclude the Receiving Party from seeking
to compel production of those materials, or constitute an admission that the
materials were in fact privileged.

c.

In addition to any other obligation to preserve documents, the Producing Party
must preserve any documents recalled under this Paragraph for the duration of
this litigation.

Filing Under Seal
28.

All transcripts of depositions, exhibits, answers to interrogatories, pleadings, briefs, and

other documents submitted to the Court that have been designated as “CONFIDENTIAL,” or
“CONFIDENTIAL - OUTSIDE ATTORNEYS EYES ONLY,” or which contain information so
designated, shall be filed under seal in accordance with Local Rule CV-5(a)(7), or if electronic
submission is impossible, in sealed envelopes or other appropriate sealed containers labeled with
the case caption, the words “CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE
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ATTORNEYS EYES ONLY,” or “SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY
– RESTRICTED CONFIDENTIAL” as appropriate, and a statement in substantially the
following form, or such as other form as ordered by the Court or required by the Clerk of the
Court:
This envelope contains confidential information filed in this case
by [name of party] that is subject to a Protective Order of the
Court. It should not be opened or its contents disclosed, revealed or
made public except by Order of the Court or agreement of the
parties.
Use of Protected Material at Hearing or Trial
29.

The Order also applies to pretrial discovery. Nothing in this Order shall be deemed to

prevent the Parties from introducing any Protected Material into evidence at the trial of this
Action, or from using any information contained in Protected Material at the trial of this Action,
subject to any pretrial order issued by this Court. In the event that Protected Material may be
offered in evidence at trial or at any hearing, a Producing Party may move the Court for an order
that Protected Material be received in camera or under such other conditions as are necessary to
prevent inappropriate disclosure, such as filing under seal or exclusion from the courtroom of all
persons not authorized to review the Protected Material under Paragraphs 10-20. Upon such a
motion, the Court will determine what protection, if any, may be afforded to the Protected
Material at the hearing or trial.
Additional Protection
30.

This Protective Order is entered without prejudice to the right of any party to seek

different or additional protections if it believes the protections of this order are not applicable or
are inadequate. Nothing herein shall be deemed to preclude any Producing Party from seeking
such different or additional protection, including that certain matter not be produced at all. 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 Protected Material to additional persons or entities if reasonably necessary to
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prepare and present this Action and/or (b) to apply for additional protection of Protected
Material.
31.

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.
No Waiver
32.

Execution of this Protective Order shall not constitute a waiver of the right of any party to

claim in this action or otherwise that any Protected Material, or any portion thereof, is privileged
or otherwise non-discoverable, or is not admissible in evidence in this action or any other
proceeding.
No Limitations on Party’s Own Protected Material
33.

Nothing in this Order shall restrict any party to this lawsuit or its attorneys from

disclosing or using, in any manner and for any purpose, its own Protected Material.
Subpoena of Protected Material
34.

If any Receiving Party receives a subpoena or other legal process commanding the

production of any Protected Material, that party shall inform the party requesting the production
that some or all of the material covered by the subpoena or order is subject to this Protective
Order and promptly give written notice thereof to the Producing Party (or their counsel of record
in this case). If the Producing Party challenges the production, it shall have the burden of
seeking a court order relieving the subpoenaed party of the obligations pursuant to the subpoena;

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and the Receiving Party shall not produce any Protected Material absent an order of a court of
competent jurisdiction or the express written consent of the Producing Party.
Unauthorized Access
35.

The Receiving Party shall promptly notify the Producing Party upon becoming aware of

any loss, theft and/or unauthorized copying or disclosure of Protected Material, and shall take all
steps reasonably necessary and available to retrieve such Protected Material and prevent any
further unauthorized access or dissemination.
Disposition of Protected Material
36.

Unless otherwise ordered or agreed, within sixty (60) days after the settlement and

dismissal of a Producing Party from this action or the final non-appealable termination of this
action, each Receiving Party shall, at the Producing Party’s option, return or destroy all Protected
Material, including all copies, duplicates, indexes, notes, abstracts, compilations, summaries or
any other form of reproducing or capturing of any Protected Material. Outside counsel for each
party shall remind any experts, consultants and others as appropriate of their obligation to
destroy or return Protected Material. Outside Counsel for the party or parties receiving the
Protected Material shall keep their attorney work product and all documents filed in this action
which refer or relate to any Protected Material. Attorney work product may be used in
subsequent litigation provided that such use does not disclose Protected Material or any
information contained therein. The Receiving Party shall submit a written certification by the
sixty-day (60) deadline confirming that all Protected Material has been destroyed (or handled as
otherwise ordered or agreed) and which affirms that the Receiving Party has not retained any
paper or electronic copies not otherwise authorized under this Order.
Survival of Order
37.

The terms of this Protective Order shall survive and remain in effect after the termination

of the above-captioned matter.
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Binding Effect
38.

This Order shall be binding upon the parties and their attorneys, successors, executors,

personal representatives, administrators, heirs, legal representatives, assigns, subsidiaries,
divisions, employees, agents, independent contractors, or other persons or organizations over
which they have control.
Effective as a Stipulation
39.

This Stipulated Protective Order shall become effective as a stipulation between the

parties immediately upon the filing of the motion to enter stipulated protective order,
notwithstanding the pendency of approval by the Court, and the parties shall treat any Protected
Material produced before Court approval as provided herein.
40.

In the event that any of dates provided for in this Orders falls on a weekend or Court

holiday, the deadline is modified to be the next Court business day.

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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.

CASE NO. 6:10-CV-373
PATENT CASE

SONY CORPORATION OF AMERICA, ET
AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-471
PATENT CASE

vs.
DISK DOCTORS LABS, INC., ETAL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.

CASE NO. 6:10-CV-472
PATENT CASE

NATIONAL INSTRUMENTS CORP., ET
AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-591
PATENT CASE

vs.
ENGRASP,INC., ET AL.
Defendants.

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UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-636
PATENT CASE

vs.
BMC SOFTWARE, INC., ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
CASE NO. 6:10-CV-691
PATENT CASE

vs.
FOXIT CORPORATION, ET AL.
Defendants.

SYMANTEC CORPORATION, ET AL.
Plaintiffs,
CASE NO. 6:11-CV-33
PATENT CASE

vs.
UNILOC USA, INC., ET AL.
Defendants.

EXHIBIT A
UNDERTAKING REGARDING PROTECTIVE ORDER

I, ____________________________________________, declare that:
1.

My address is ___________________________________________________________.
My current employer is ___________________________________________________.
My current occupation is __________________________________________________.

2.

I have received a copy of the Protective Order in this action. I have carefully read and
- 29 -

understand the provisions of the Protective Order.
3.

I will comply with all of the provisions of the Protective Order. I will hold in confidence,
will not disclose any Protected Materials to anyone not qualified under the Protective
Order, and will use only for purposes of this action any information designated as
“CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE ATTORNEYS EYES ONLY” or
“SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” that is disclosed to me.

4.

Promptly upon termination of these actions or after my involvement in these actions
otherwise terminates, I will return all documents and things designated as
“CONFIDENTIAL,” “CONFIDENTIAL - OUTSIDE ATTORNEYS EYES ONLY” or
“SOURCE CODE – OUTSIDE ATTORNEYS EYES ONLY – RESTRICTED
CONFIDENTIAL” 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.

5.

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 foregoing is true and correct.
Signature ________________________________________
Name Printed _____________________________________
Date ____________________________________________

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