I/P Engine, Inc. v. AOL, Inc. et al
Filing
84
Joint MOTION for Protective Order and Memorandum in Support of Joint Motion for Entry of Agreed Protective Order by AOL, Inc., Gannett Company, Inc., Google, Inc., I/P Engine, Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1)(Noona, Stephen)
Exhibit 1
EXHIBIT 1
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,
v.
Civil Action No. 2:11-cv-512
AOL, INC., et al.,
Defendants.
AGREED PROTECTIVE ORDER
In order to expedite the flow of discovery materials, facilitate the prompt resolution of
disputes over confidentiality of discovery materials, adequately protect information the parties
are entitled to keep confidential, ensure that only materials the parties are entitled to keep
confidential are subject to such treatment, and ensure that the parties are permitted reasonably
necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R.
Civ. P. 26(c), it is hereby ORDERED THAT:
1.
INFORMATION SUBJECT TO THIS ORDER
Discovery materials produced in this case may be labeled as one of three
categories: CONFIDENTIAL, CONFIDENTIAL OUTSIDE COUNSEL ONLY and
RESTRICTED CONFIDENTIAL – SOURCE CODE, as set forth in Items A through C
below. All three of the identified categories of information shall be identified collectively in this
Order by the title “Protected Information.”
A.
Information Designated as Confidential Information
1.
For purposes of this Order, "CONFIDENTIAL INFORMATION" shall mean all
information or material produced for or disclosed in connection with this action to a receiving
party that a producing party, including any party to this action and any non-party producing
information or material voluntarily or pursuant to a subpoena or a court order in connection with
this action, considers to comprise confidential technical, sales, marketing, financial, or other
commercially sensitive information whether embodied in physical objects, documents, or the
factual knowledge of persons, and which has been so designated by the producing party. Any
CONFIDENTIAL INFORMATION obtained by any party from any person pursuant to
discovery in this litigation may be used only for purposes of this litigation.
2.
Any document or tangible thing containing or including any CONFIDENTIAL
INFORMATION may be designated as such by the producing party by marking it
"CONFIDENTIAL" prior to or at the time copies are furnished to the receiving party.
3.
All CONFIDENTIAL INFORMATION not reduced to documentary, tangible or
physical form or which cannot be conveniently designated as set forth in paragraph 2, shall be
designated by the producing party by informing the receiving party of the designation in writing
prior to or at the time of production.
4.
Any documents (including physical objects) made available for inspection to
counsel for the receiving party prior to producing copies of selected items shall initially be
considered, as a whole, to constitute CONFIDENTIAL INFORMATION (unless otherwise
designated at the time of inspection) and shall be subject to this Order. Thereafter, the producing
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party shall have 15 days to review and designate the appropriate documents as CONFIDENTIAL
INFORMATION (or otherwise as appropriate) prior to furnishing copies to the receiving party.
5.
The following information is not CONFIDENTIAL INFORMATION:
a.
Any information that is or, after its disclosure to a receiving party, becomes part
of the public domain as a result of publication not involving a violation of this Order or other
obligation to maintain the confidentiality of such information;
b.
Any information that the receiving party can show was already publicly known
prior to the disclosure; and,
c.
Any information that the receiving party can show by written records was
received by it from a source who obtained the information lawfully and under no obligation of
confidentiality to the producing party.
6.
Documents designated CONFIDENTIAL and information contained therein shall
be available only to:
a.
Outside litigation counsel of record and supporting personnel employed in the law
firm(s) of outside litigation counsel of record, such as attorneys, paralegals, legal translators,
legal secretaries, legal clerks and shorthand reporters;
b.
Technical advisers who have signed the form attached hereto as Attachment A,
and their necessary support personnel, subject to the provisions of paragraphs 3.A-F herein; the
term “technical adviser” shall mean independent outside expert witnesses or consultants (i.e., not
employees of a party) with whom counsel may deem it necessary to consult and who comply
with paragraph 15;
c.
Up to two persons who fall into one or more of the following categories: in-house
counsel, who are members of at least one state bar in good standing with responsibility for
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managing this litigation; provided, however, that plaintiff’s counsel may provide the officers of
plaintiff with legal advice and counsel that is informed by CONFIDENTIAL INFORMATION;
d.
The Court, its personnel and stenographic reporters (under seal or with other
suitable precautions determined by the Court);
e.
Independent legal translators retained to translate in connection with this action;
independent stenographic reporters and videographers retained to record and transcribe
testimony in connection with this action; graphics, translation, or design services retained by
counsel for purposes of preparing demonstrative or other exhibits for deposition, trial, or other
court proceedings in the actions; non–technical jury or trial consulting services not including
mock jurors, unless they have signed the form attached hereto as Attachment A; and
f.
Litigation support vendors specifically retained to assist outside counsel of record
with document review.
B.
Information Designated Confidential Outside Counsel Only
1.
The CONFIDENTIAL OUTSIDE COUNSEL ONLY designation is reserved for
CONFIDENTIAL INFORMATION that constitutes (a) marketing, financial, sales, web traffic,
research and development, or technical, data or information; (b) commercially sensitive
competitive information, including, without limitation, information obtained from a nonparty
pursuant to a current Nondisclosure Agreement ("NDA"); (c) information or data relating to
future products not yet commercially released and/or strategic plans; (d) commercial agreements,
settlement agreements or settlement communications, the disclosure of which is likely to
cause harm to the competitive position of the producing party; and, (e) technical design
documentation. Documents marked CONFIDENTIAL OUTSIDE ATTORNEYS’ EYES
ONLY, HIGHLY CONFIDENTIAL or RESTRICTED CONFIDENTIAL shall be treated as if
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designated CONFIDENTIAL OUTSIDE COUNSEL ONLY. In determining whether to
information should be designated as CONFIDENTIAL OUTSIDE COUNSEL ONLY, each
party agrees to use such designation only in good faith.
2.
Documents designated CONFIDENTIAL OUTSIDE COUNSEL ONLY and
information contained therein shall be available only to the persons or entities listed in
paragraphs 1.A.6.a, b, d, e and f subject to any terms set forth or incorporated therein and not any
person or entity listed in paragraph 1.A.6.c.
C.
Information Designated Restricted Confidential - Source Code
1.
The RESTRICTED CONFIDENTIAL - SOURCE CODE designation is reserved
for CONFIDENTIAL INFORMATION that contains or substantively relates to a party's “Source
Code,” which shall mean documents containing confidential, proprietary and/or trade secret
source code. The following conditions shall govern the production, review and use of source
code or design documentation information.
2.
All such Source Code, and any other Protected Information designated as
“RESTRICTED CONFIDENTIAL —SOURCE CODE,” shall be subject to the following
provisions
a.
Source Code, to the extent any producing party agrees to provide any such
information, shall ONLY be made available for inspection, not produced except as provided for
below, and shall be made available in electronic format, as provided below: (A) Defendants’
source code shall be made available at the Washington, D.C. offices of the producing
Defendants’ primary outside counsel of record in this action; (B) Plaintiff’s source code shall be
made available at one of the following locations chosen at the sole discretion of the producing
party: (1) the Washington, D.C. or Palo Alto, CA office of plaintiff’s primary outside counsel of
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record in this action; (2) the San Francisco, CA or Redwood Shores, CA offices of the receiving
party’s primary outside counsel of record in this action; (3) the Washington, D.C. office of the
receiving party’s primary outside counsel of record in this action; (4) a single, third-party site
(e.g., an escrow company) located within the judicial district in which the Source Code is stored
in the ordinary course of business, where this litigation is pending, or in which a receiving
party’s expert (who has been approved to access the Source Code pursuant to this Order) resides;
or (5) a location mutually agreed upon by the receiving and producing parties. The parties agree
to cooperate in good faith to determine a location for source code production. Any location
under (1), (2) (3), (4) or (5) above shall be in the continental United States. Source Code will be
loaded on a single, non-networked computer that is password protected and maintained in a
secure, locked area. Use or possession of any input/output device (e.g., USB memory stick,
cameras or any camera-enabled device, CDs, floppy disk, portable hard drive, laptop, etc.) is
prohibited while accessing the computer containing the Source Code. All persons entering the
locked room containing the Source Code must agree to submit to reasonable security measures to
insure they are not carrying any prohibited items before they will be given access to the locked
room. The computer containing Source Code will be made available for inspection during
regular business hours, upon reasonable notice to the producing party, which shall not be less
than 3 business days in advance of the requested inspection. Inspections to take place outside
regular business hours shall require advance notice of not less than two business days, and
inspection on a weekend shall require notice made no later than the close of business of the
preceding Wednesday.
b.
The receiving party's outside counsel and/or experts additionally may identify
commercially available licensed software analysis tools for viewing and/or searching Source
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Code and may request that the producing party install such commercially available licensed
software on the secured source code computer(s), which request shall not be unreasonably
denied. The receiving party must provide the producing party with the CD or DVD containing
such software tool(s) at least four business days in advance of the receiving party’s desired
installation date. The receiving party’s outside counsel and/or expert shall be entitled to take
notes relating to the Source Code but may not copy any portion of the Source Code into the
notes. All such notes will be taken on bound (spiral or other type of permanently bound)
notebooks. No loose paper or other paper that can be used in a printer may be brought into the
secure facility specified in paragraph 1.C.2(a) by the receiving party or its experts. No copies of
all or any portion of the Source Code may leave the room in which the Source Code is inspected
except as otherwise provided herein. Further, no other written or electronic record of the Source
Code is permitted except as otherwise provided herein.
c.
No person shall copy, e-mail, transmit, upload, download, print, photograph or
otherwise duplicate any portion of the designated Source Code, except as otherwise provided
herein. The producing party shall supply and configure a dedicated, attached printer for use with
the non-networked computer on which the Source Code is loaded. The receiving party may print
a reasonable number of pages of Source Code, but only on sequentially Bates numbered paper
provided by the producing party as provided herein, and only if and to the extent necessary for
use in this action. In no event may the receiving party print more than 25 consecutive pages, or
an aggregate total of more than 500 pages, of Source Code during the duration of the case
without prior written approval by the producing party. The producing party will provide a
limited number of watermarked or colored paper bearing Bates numbers and the legend
“RESTRICTED CONFIDENTIAL - SOURCE CODE" unless objected to as discussed
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below. The printed pages shall constitute part of the Source Code produced by the producing
party in this action. Upon the inspecting parties request, the producing party shall timely provide
paper as needed for the inspecting party to make up to two additional sets (or subsets) of printed
Source Code.
d.
At the time of review, the producing party will provide to the receiving party a
copy of the Source Code printed by the receiving party in the Source Code viewing room, unless
the receiving party has printed more than 25 consecutive pages of Source Code or has printed
more than 500 pages of Source Code during the duration of the case. In the event that the
receiving party has printed more than 25 consecutive pages of Source Code or has printed more
than 500 pages of Source Code during the duration of the case, and the parties have not
otherwise agreed to permit the printing of additional pages, then the producing party shall either
provide the additional pages, or shall withhold the printed Source Code that exceeds these limits
and seek immediate judicial relief.
e.
Subject to section 1.C.2.d, supra, any printed pages of Source Code, and any
other documents or things reflecting Source Code that have been designated by the producing
party as “RESTRICTED CONFIDENTIAL - SOURCE CODE” may not be copied, digitally
imaged or otherwise duplicated, except in limited excerpts necessary to attach as exhibits to
depositions, expert reports, or court filings as discussed below.
f.
Any paper copies designated “RESTRICTED CONFIDENTIAL - SOURCE
CODE” shall be stored or viewed only at (i) the offices of outside counsel for the receiving party,
(ii) the offices of outside experts or consultants who have been approved to access Source Code;
(iii) the site where any deposition is taken; (iv) the Court; or (v) any intermediate location
necessary to transport the information to a hearing, trial or deposition. Any such paper copies
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shall be maintained at all times in secure location under the direct control of counsel responsible
for maintaining the security and confidentiality of the designated materials and authorized to
view RESTRICTED CONFIDENTIAL − SOURCE CODE materials pursuant to paragraph
1.C.2(k).
g.
A list of names of persons who will view the Source Code will be provided to the
producing party in conjunction with any written (including email) notice requesting
inspection. The receiving party shall maintain a daily log of the names of persons who enter the
locked room to view the Source Code and when they enter and depart. The producing party shall
be entitled to have a person observe all entrances and exits from the Source Code viewing room,
and to a copy of the log.
h.
Unless otherwise agreed in advance by the parties in writing, following each
inspection, the receiving party’s outside counsel and/or experts shall remove all notes,
documents, and all other materials from the room that may contain work product and/or attorneyclient privileged information. The producing party shall not be responsible for any items left in
the room following each inspection session.
i.
The receiving party will not copy, remove, or otherwise transfer any portion of the
Source Code from the Source Code Computer including, without limitation, copying, removing,
or transferring any portion of the Source Code onto any other computers or peripheral
equipment. The receiving party will not transmit any portion of the Source Code in any way
from the location of the Source Code inspection.
j.
Only the following individuals shall have access to “RESTRICTED
CONFIDENTIAL - SOURCE CODE” materials, absent the express written consent of the
Producing Party or further court order:
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(1)
Outside counsel of record for the parties to this action, including any attorneys,
paralegals, technology specialists and clerical employees of their respective law firms;
(2)
Up to four (4) outside experts or consultants per party, pre-approved in
accordance with Paragraphs 3A-3F and specifically identified as eligible to access Source Code;
(3)
The Court, its technical advisor (if one is appointed), the jury, court personnel,
and court reporters or videographers recording testimony or other proceedings in this action.
Court reporters and/or videographers shall not retain or be given copies of any portions of the
Source Code. If used during a deposition, the deposition record will identify the exhibit by its
production numbers;
(4)
While testifying at deposition or trial in this action only: (i) any current or former
officer, director or employee of the producing party or original source of the information; (ii) any
person designated by the producing party to provide testimony pursuant to Rule 30(b)(6) of the
Federal Rules of Civil Procedure; and/or (iii) any person who authored, previously received
(other than in connection with this litigation), or was directly involved in creating, modifying, or
editing the Source Code, as evident from its face or reasonably certain in view of other testimony
or evidence. Persons authorized to view Source Code pursuant to this sub-paragraph shall not
retain or be given copies of the Source Code except while so testifying.
k.
The Receiving Party’s outside counsel shall maintain a log of all copies of the
Source Code (received from a Producing Party) that are delivered by the Receiving Party to any
qualified person under Paragraph g above. The log shall include the names of the recipients and
reviewers of copies and locations where the copies are stored. Upon request by the producing
party, the receiving party shall provide reasonable assurances and/or descriptions of the security
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measures employed by the receiving party and/or qualified person that receives a copy of any
portion of the Source Code;
l.
Except as provided in this paragraph, the Receiving Party may not create
electronic images, or any other images, of the Source Code from the paper copy for use on a
computer (e.g., may not scan the source code to a PDF, or photograph the code). The Receiving
Party may create an electronic copy or image of limited excerpts of Source Code only to the
extent necessary in pleadings, briefs, motions, exhibits, expert reports, discovery documents,
deposition transcripts, other Court documents, or any drafts of these documents ("SOURCE
CODE DOCUMENTS"). The receiving party shall only include such excerpts as are reasonably
necessary for the purposes for which such part of the Source Code is used, and no such excerpt
shall exceed 25 consecutive lines of source code without prior approval by the producing party
(which shall not unreasonably be withheld). 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 except to the extent permitted
herein. The receiving party may create an electronic image of a selected portion of the Source
Code only when the electronic file containing such image has been encrypted using
commercially reasonable encryption software including password protection. The
communication and/or disclosure of electronic files containing any portion of Source Code shall
at all times be limited to individuals who are authorized to see Source Code under the provisions
of this Protective Order. The receiving party shall maintain a log of all electronic images and
paper copies of Source Code in its possession or in the possession of its retained consultants,
including the names of the recipients and reviewers of any electronic or paper copies and the
locations where the copies are stored in accordance with paragraph 1.C.2(g)
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above. Additionally, all electronic copies must be labeled "RESTRICTED CONFIDENTIAL SOURCE CODE."
m.
To the extent portions of Source Code are quoted in a SOURCE CODE
DOCUMENT, either (1) the entire document will be stamped and treated as RESTRICTED
CONFIDENTIAL-SOURCE CODE or (2) those pages containing quoted Source Code will be
separately bound, and stamped and treated as RESTRICTED CONFIDENTIAL-SOURCE
CODE. All SOURCE CODE DOCUMENTS shall be filed under seal.
n.
During a deposition in which the content of a party’s confidential source code is
quoted or otherwise discussed, a producing party may designate the full transcript
RESTRICTED CONFIDENTIAL —SOURCE CODE. The producing party will have an
additional 20 days from the date of the deposition to either (i) confirm in writing that the entire
transcript was properly (and shall remain) designated RESTRICTED CONFIDENTIAL—
SOURCE CODE or (ii) designate those specific portions of the transcript that shall remain
designated as RESTRICTED CONFIDENTIAL—SOURCE CODE. Any portions so designated
shall thereafter be treated in accordance with the terms of this Order.
o.
All copies of any portion of the Source Code in whatever form shall be securely
destroyed if they are no longer in use. 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.
p.
The receiving party’s outside counsel may only disclose a copy of the Source
Code to individuals specified in Paragraph 1.C.2(k) above (e.g., Source Code may not be
disclosed to in-house counsel).
D.
Use of Protected Information at Trial
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The parties will not oppose any request by the producing party that the courtroom should
be sealed, if allowed by the Court, during the presentation of any testimony relating to or
involving the use of any Protected Information.
2.
PROSECUTION BAR
A.
Any person reviewing any of an opposing party’s CONFIDENTIAL materials,
CONFIDENTIAL OUTSIDE COUNSEL ONLY materials or RESTRICTED
CONFIDENTIAL—SOURCE CODE materials (all of which shall also be automatically
designated as “Prosecution Bar Materials”) shall not, for a period commencing upon receipt of
such information and ending three years following the conclusion of this case (including any
appeals) engage in any Prosecution Activity (as defined below) on behalf of a party asserting a
patent in this case. Furthermore, any person reviewing any of an opposing party’s Prosecution
Bar Materials shall not, for a period commencing upon receipt of such information and ending
three years following the conclusion of this case (including any appeals) engage in any
Prosecution Activity involving the same family as the patents-in-suit, or any other claims on a
method, apparatus, or system that provides matches to user queries by employing a
collaborative/content-based filter to make continuing searches for information entities and that
contains a user feedback system that integrates feedback data with content profile data in the
collaborative/content-based filter.
B.
The following documents and materials shall not be eligible for classification as
Prosecution Bar Materials: (i) documents and information related only to damages or reasonable
royalty rates; (ii) publications, including patents and published patent applications; (iii) materials
regarding a third party system or product that is publicly known, on sale, or in public use unless
such materials are designated as Prosecution Bar Materials by that third party or are subject to
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confidentiality obligations owed to that third party; and (iv) information that is publicly
available.
C.
Prosecution Activity shall mean: (1) prepare and/or prosecute any patent
application (or portion thereof), whether design or utility, and either in the United States or
abroad on behalf of a patentee or assignee of patentee’s rights; (2) prepare patent claim(s) on
behalf of a patentee or assignee of patentee’s rights; (3) participate in any reissue proceedings on
behalf of a patentee or assignee of patentee’s rights; or (4) provide advice, counsel or suggestions
regarding, or in any other way influencing, claim scope and/or language, embodiment(s) for
claim coverage, claim(s) for prosecution, or products or processes for coverage by claim(s) on
behalf of a patentee or assignee of patentee’s rights. In addition, nothing in this paragraph shall
prevent any attorney from sending 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. Prior Art shall mean (i) publications, including patents and published patent
applications; and (ii) materials or information regarding a third party system or product that was
publicly known, on sale, or in public use as of the relevant priority date, unless such materials are
designated as Prosecution Bar Materials by that third party or are subject to confidentiality
obligations owed to that third party.
3.
DISCLOSURE OF TECHNICAL ADVISERS
A.
Information designated by the producing party under any category of Protected
Information and such copies of this information as are reasonably necessary for maintaining,
defending or evaluating this litigation may be furnished and disclosed to the receiving party's
technical advisers and their necessary support personnel.
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B.
No disclosure of Protected Information to a technical adviser or their necessary
support personnel shall occur until that person has signed the form attached hereto as Attachment
A, and a signed copy has been provided to the producing party; and to the extent there has been
an objection under paragraph 3.C., that objection is resolved according to the procedures set
forth below.
C.
A party desiring to disclose Protected Information to a technical adviser shall also
give prior written notice of the intended disclosure by email to all counsel of record in the
litigation, and the producing party shall have ten business days after such notice is given to
object in writing to the disclosure. The party desiring to disclose Protected Information to a
technical adviser must provide the following information for each technical adviser: the name,
address, curriculum vitae, current employer, employment history for the past ten years, a listing
of cases in which the witness has testified as an expert at trial or by deposition within the
preceding five years, and a identification of any patents or patent applications in which the
technical adviser is identified as an inventor or applicant, is involved in prosecuting or
maintaining, or has any pecuniary interest. No Protected Information shall be disclosed to such
expert(s) or consultant(s) until after the expiration of the foregoing notice period and resolution
of any objection.
D.
A party objecting to disclosure of Protected Information to a technical adviser
shall state with particularity the ground(s) of the objection. The objecting party's consent to the
disclosure of Protected Information to a technical adviser shall not be unreasonably withheld,
and its objection must be based on that party's good faith belief that disclosure of its Protected
Information to the technical adviser will result in specific business or economic harm to that
party.
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E.
If after consideration of the objection, the party desiring to disclose the Protected
Information to a technical adviser refuses to withdraw the technical adviser that is the subject of
the objection, that party shall provide notice to the objecting party. Thereafter, the objecting
party shall move the Court, within 5 business days of receiving such notice, for a ruling on its
objection. A failure to file a motion within the five business day period, absent an agreement of
the parties to the contrary or for an extension of such period, shall operate as an approval of
disclosure of Protected Information to the technical adviser. The parties agree to cooperate in
good faith to shorten the time frames set forth in this paragraph if necessary to abide by any
discovery or briefing schedules.
F.
The objecting party shall have the burden of showing to the Court "good cause"
for preventing the disclosure of its Protected Information to the technical adviser. This "good
cause" shall include a particularized showing that: (1) the Protected Information is confidential
commercial information, (2) disclosure of the Protected Information likely would result in a
clearly defined and serious injury to the objecting party's business, (3) the proposed technical
advisor is in a position to allow the Protected Information to be disclosed to or become known by
the objecting party's competitors, and (4) that the technical advisor’s access to Protected
Information may create other confidentiality or legal risks in connection with other patent-related
activities or interests tied to the technical advisor. Objections to experts are subject to a
reasonableness requirement, and objections may not unreasonably be made.
4.
CHALLENGES TO CONFIDENTIALITY DESIGNATIONS
A.
The parties shall use reasonable care when designating documents or information
as Protected Information. Nothing in this Order shall prevent a receiving party from contending
that any documents or information designated as Protected Information have been improperly
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designated. A receiving party may at any time request that the producing party cancel or modify
the Protected Information designation with respect to any document or information contained
therein.
B.
A party shall not be obligated to challenge the propriety of a designation of any
category of Protected Information at the time of production, and a failure to do so shall not
preclude a subsequent challenge thereto. Such a challenge shall be written, shall be served on
counsel for the producing party, and shall particularly identify the documents or information that
the receiving party contends should be differently designated. The parties shall use their best
efforts to resolve promptly and informally such disputes. If an agreement cannot be reached, the
receiving party shall request that the Court cancel or modify a designation. The burden of
demonstrating the confidential nature of any information shall at all times be and remain on the
designating party.
C.
Until a determination by the Court, the information in issue shall be treated as
having been properly designated and subject to the terms of this Order.
5.
LIMITATIONS ON THE USE OF PROTECTED INFORMATION
A.
All Protected Information shall be held in confidence by each person to whom it
is disclosed, shall be used only for purposes of this litigation, shall not be used for any business
purpose or in connection with any other legal proceeding, and shall not be disclosed to any
person who is not entitled to receive such information as herein provided. All produced
Protected Information shall be carefully maintained so as to preclude access by persons who are
not entitled to receive such information.
B.
Except as may be otherwise ordered by the Court, any person may be examined as
a witness at depositions and trial and may testify concerning all Protected Information of which
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such person has prior knowledge. Except for designations made pursuant to Fed. R. Civ. Pro.
30(b)(6) or otherwise provided by the Federal Rules of Civil Procedure or Federal Rules of
Evidence, any such person shall be testifying in his or her individual capacity and not on behalf
of any party hereto. Without in any way limiting the generality of the foregoing:
1.
A present director, officer, and/or employee of a producing party may be
examined and may testify concerning all Protected Information which has been produced by that
party and of which the witness has personal knowledge;
2.
A former director, officer, agent and/or employee of a producing party may be
interviewed, examined and may testify concerning all Protected Information of which he or she
has personal knowledge, including any Protected Information that refers to matters of which the
witness has personal knowledge, which has been produced by that party and which pertains to
the period or periods of his or her employment; and
3.
Non-parties may be examined or testify concerning any document containing
Protected Information of a producing party which appears on its face or from other documents or
testimony to have been received from or communicated to the non-party as a result of any
contact or relationship with the producing party or a representative of the producing party. Any
person other than the witness, his or her attorney(s), or any person qualified to receive Protected
Information under this Order shall be excluded from the portion of the examination concerning
such information, unless the producing party consents to persons other than qualified recipients
being present at the examination. If the witness is represented by an attorney who is not
qualified under this Order to receive such information, then prior to the examination, the attorney
must provide a signed statement, in the form of Attachment A hereto, that he or she will comply
with the terms of this Order and maintain the confidentiality of Protected Information disclosed
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during the course of the examination. In the event that such attorney declines to sign such a
statement prior to the examination, the parties, by their attorneys, shall jointly seek a protective
order from the Court prohibiting the attorney from disclosing Protected Information.
4.
All transcripts of depositions, exhibits, answers to interrogatories, pleadings,
briefs, and other documents submitted to the Court which have been designated as Protected
Information, or which contain information so designated, shall be filed under seal in a manner
prescribed by the Court for such filings, including complying with Rule 5 of the Local Rules for
the United States District Court for the Eastern District of Virginia.
5.
Outside attorneys of record for the parties are hereby authorized to be the persons
who may retrieve confidential exhibits and/or other confidential matters filed with the Court
upon termination of this litigation without further order of this Court, and are the persons to
whom such confidential exhibits or other confidential matters may be returned by the Clerk of
the Court, if they are not so retrieved. No material or copies thereof so filed shall be released
except by order of the Court, to outside counsel of record, or as otherwise provided for
hereunder. Notwithstanding the foregoing and with regard to material designated as
RESTRICTED CONFIDENTIAL – SOURCE CODE, the provisions of Paragraph 1.C. are
controlling to the extent those provisions differ from this paragraph.
6.
Protected Information shall not be copied or otherwise produced by a receiving
party, except for transmission to qualified recipients, without the written permission of the
producing party, or, in the alternative, by further order of a court of law or other tribunal of
competent jurisdiction, provided, however, that a receiving party who becomes subject to an
order to disclose a producing party’s Protected Information shall promptly notify the producing
party of the order so that the producing party may have an opportunity to appear and be heard on
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whether such Protected Information should be disclosed. Nothing herein shall, however, restrict
a qualified recipient from making working copies, abstracts, digests and analyses of
CONFIDENTIAL and CONFIDENTIAL OUTSIDE COUNSEL ONLY information for use in
connection with this litigation and such working copies, abstracts, digests and analyses shall be
deemed Protected Information under the terms of this Order. Further, nothing herein shall
restrict a qualified recipient from converting or translating CONFIDENTIAL and
CONFIDENTIAL OUTSIDE COUNSEL ONLY information into machine readable form for
incorporation into a data retrieval system used in connection with this action, provided that
access to that Protected Information, in whatever form stored or reproduced, shall be limited to
qualified recipients.
7.
At the request of any party, the original and all copies of any deposition transcript,
in whole or in part, shall be marked "CONFIDENTIAL” or “CONFIDENTIAL OUTSIDE
COUNSEL ONLY” by the reporter. This request may be made orally during the deposition or in
writing within twenty (20) days after the completion of the deposition. Deposition transcripts
shall be treated by default as CONFIDENTIAL OUTSIDE COUNSEL ONLY until the
expiration of the time to make a confidentiality designation. Any portions so designated shall
thereafter be treated in accordance with the terms of this Order.
C.
No Protected Information may leave the territorial boundaries of the United States
of America. Without limitation, this prohibition extends to Protected Information (including
copies) in physical and electronic form. The viewing of Protected Information through
electronic means outside the territorial limits of the United States of America is similarly
prohibited. Notwithstanding this prohibition, Protected Information, exclusive of material
designated RESTRICTED CONFIDENTIAL - SOURCE CODE, and to the extent otherwise
20
permitted by law, may be taken outside the territorial limits of the United States if it is
reasonably necessary for a deposition taken in a foreign country. The restrictions contained
within this paragraph may be amended through the consent of the producing Party to the extent
that such agreed to procedures conform with applicable export control laws and regulations.
6.
NON-PARTY USE OF THIS PROTECTIVE ORDER
A.
A nonparty producing information or material voluntarily or pursuant to a
subpoena or a court order may designate such material or information as Protected Information
pursuant to the terms of this Protective Order.
B.
A nonparty's use of this Protective Order to protect its Protected Information does
not entitle that nonparty access to the Protected Information produced by any party in this case.
7.
NO WAIVER OF PRIVILEGE
Nothing in this Protective Order shall require production of information that a party
contends is protected from disclosure by the attorney-client privilege, the work product
immunity or other privilege, doctrine, right, or immunity. If information subject to a claim of
attorney-client privilege, work product immunity, or other privilege, doctrine, right, or immunity
is nevertheless inadvertently or unintentionally produced, such production shall in no way
prejudice or otherwise constitute a waiver or estoppel as to any such privilege, doctrine, right or
immunity. Any party that inadvertently produces materials protected by the attorney-client
privilege, work product privilege, or other privilege, doctrine, right, or immunity may obtain the
return of those materials by promptly notifying the recipient(s) and providing a privilege log for
the inadvertently produced materials. The recipient(s) shall gather and return all copies of the
privileged material to the producing party, except for any pages containing privileged markings
by the recipient, which pages shall instead be destroyed and certified as such by the recipient to
21
the producing party. Notwithstanding this provision, outside litigation counsel of record are not
required to delete information that may reside on their respective firm's electronic back-up
systems that are over-written in the normal course of business.
8.
MISCELLANEOUS PROVISIONS
A.
Any of the notice requirements herein may be waived, in whole or in part, but
only in writing signed by the attorney-in-charge for the party against whom such waiver will be
effective.
B.
Inadvertent or unintentional production of documents or things containing
Protected Information which are not designated as one or more of the three categories of
Protected Information at the time of production shall not be deemed a waiver in whole or in part
of a claim for confidential treatment. With respect to documents, the producing party shall
immediately upon discovery notify the other parties of the error in writing and provide
replacement pages bearing the appropriate confidentiality legend. In the event of any disclosure
of Protected Information other than in a manner authorized by this Protective Order, including
any unintentional or inadvertent disclosure, counsel for the party responsible for the disclosure
shall immediately notify opposing counsel of all of the pertinent facts, and make every effort to
further prevent unauthorized disclosure including, retrieving all copies of the Protected
Information from the recipient(s) thereof, and securing the agreement of the recipients not to
further disseminate the Protected Information in any form. Compliance with the foregoing shall
not prevent the producing party from seeking further relief from the Court.
C.
Within sixty days after the entry of a final non-appealable judgment or order, or
the complete settlement of all claims asserted against all parties in this action, each party shall, at
the option of the producing party, either return or destroy all physical objects and documents
22
which embody Protected Information it has received, and shall destroy in whatever form stored
or reproduced, all physical objects and documents, including but not limited to, correspondence,
memoranda, notes and other work product materials, which contain or refer to any category of
Protected Information. All Protected Information, not embodied in physical objects and
documents shall remain subject to this Order.
In the event that a party is dismissed before the
entry of a final non-appealable judgment or order, this same procedure (e.g., all Protected
Information shall be returned or destroyed within 60 days of a final non-appealable judgment,
order, or settlement of all parties) shall apply to any Protected Information received from or
produced to the dismissed party. Notwithstanding this provision, outside litigation counsel of
record are not required to delete information that may reside on their respective firm's electronic
back-up systems that are over-written in the normal course of business. Notwithstanding the
foregoing, outside counsel shall be entitled to maintain two (2) copies of all pleadings, motions
and trial briefs (including all supporting and opposing papers and exhibits thereto), written
discovery requests and responses (and exhibits thereto), deposition transcripts (and exhibits
thereto), trial transcripts, and exhibits offered or introduced into evidence at any hearing or trial,
and their attorney work product which refers or is related to any CONFIDENTIAL and
CONFIDENTIAL OUTSIDE COUNSEL ONLY information for archival purposes only. If a
party opts to destroy CONFIDENTIAL or CONFIDENTIAL OUTSIDE COUNSEL ONLY
information, the party must provide a Certificate of Destruction to the producing party.
D.
If at any time documents containing Protected Information are subpoenaed by any
court, arbitral, administrative or legislative body, or are otherwise requested in discovery, the
person to whom the subpoena or other request is directed shall immediately give written notice
thereof to every party who has produced such documents and to its counsel and shall provide
23
each such party with an opportunity to object to the production of such documents. Any person
or party subject to this order who becomes subject to a motion to disclose another party’s
information designated CONFIDENTIAL or CONFIDENTIAL OUTSIDE COUNSEL ONLY
pursuant to this Order shall promptly notify that party of the motion so that the party may have
an opportunity to appear and be heard on whether that information should be disclosed. If a
producing party does not take steps to prevent disclosure of such documents within ten business
days of the date written notice of the subpoena or motion is given, the party to whom the
referenced subpoena or motion is directed may produce such documents in response thereto, but
shall take all reasonable measures to have such documents treated in accordance with terms of
this Protective Order.
E.
Testifying experts shall not be subject to discovery of any draft of their reports in
this case and such draft reports, notes, outlines, or any other writings leading up to an issued
report(s) in this litigation are exempt from discovery. In addition, all communications between
counsel for a party and that party’s testifying expert, and all materials generated by a testifying
expert with respect to that person’s work, are exempt from discovery unless they relate to the
expert’s compensation or identify facts, data or assumptions relied upon by the expert in forming
any opinions in this litigation and such information is not already disclosed in the expert’s report.
F.
No party shall be required to identify on their respective privilege log any
document or communication dated on or after the filing of the lawsuit, which absent this
provision, the party would have been obligated to so identify on said privilege log. The parties
shall exchange their respective privilege document logs at a time to be agreed upon by the parties
following the production of documents.
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G.
This Order is entered without prejudice to the right of any party to apply to the
Court at any time for additional protection, or to relax or rescind the restrictions of this Order,
when convenience or necessity requires. Furthermore, without application to this Court, any
party that is a beneficiary of the protections of this Order may enter a written agreement
releasing any other party hereto from one or more requirements of this Order even if the conduct
subject to the release would otherwise violate the terms herein.
H.
The United States District Court for the Eastern District of Virginia is responsible
for the interpretation and enforcement of this Agreed Protective Order. After termination of this
litigation, the provisions of this Agreed Protective Order shall continue to be binding except with
respect to those documents and information that become a matter of public record. This Court
retains and shall have continuing jurisdiction over the parties and recipients of the Protected
Information for enforcement of the provision of this Agreed Protective Order following
termination of this litigation. All disputes concerning Protected Information produced under the
protection of this Agreed Protective Order shall be resolved by the United States District Court
for the Eastern District of Virginia.
I.
Nothing in this Protective Order shall preclude or impede outside litigation
counsel of record’s ability to communicate with or advise their client in connection with this
litigation only based on such counsel’s review and evaluation of Protected Information, provided
however, that such communications or advice shall not disclose or reveal the substance or
content of any Protected Information other than as permitted under this Protective Order.
J.
Each of the parties agrees to be bound by the terms of this Protective Order as of
the date counsel for such party executes this Protective Order, even if prior to entry of this order
by the Court.
25
SIGNED this
day
, 2012.
_____________________________________________
UNITED STATES DISTRICT JUDGE
26
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,
v.
Civil Action No. 2:11-cv-512
AOL, INC., et al.,
Defendants.
ATTACHMENT A TO THE AGREED PROTECTIVE ORDER
CONFIDENTIAL AGREEMENT
My name is ____________________________________________________________.
1.
I reside at ________________________________________________________.
2.
My present employer is
.
3.
My present occupation or job description is
.
4.
I have read the Agreed Protective Order dated
engaged as
, 2012, and have been
on behalf of
in the preparation and conduct of the above-captioned litigation.
4.
I am fully familiar with and agree to comply with and be bound by the provisions
of said Order. I understand that I am to retain all copies of any documents designated as
CONFIDENTIAL, CONFIDENTIAL OUTSIDE COUNSEL ONLY and/or RESTRICTED
CONFIDENTIAL-SOURCE CODE information in a secure manner, and that all copies are to
27
remain in my personal custody until I have completed my assigned duties, whereupon the copies
and any writings prepared by me containing any CONFIDENTIAL, CONFIDENTIAL
OUTSIDE COUNSEL ONLY and/or RESTRICTED CONFIDENTIAL-SOURCE CODE
information are to be returned to counsel who provided me with such material.
5.
I will not divulge to persons other than those specifically authorized by said
Order, and will not copy or use except solely for the purpose of this action, any information
obtained pursuant to said Order, except as provided in said Order. I also agree to notify any
stenographic or clerical personnel who are required to assist me of the terms of said Order.
6.
In accordance with paragraph 3.C of the Agreed Protective Order (if applicable), I
have attached my resume, curriculum vitae or other information to this executed Confidentiality
Agreement sufficient to identify my current employer and employment history for the past five
(5) years, and the cases in which I have testified as an expert at trial or by deposition within the
preceding five (5) years.
7.
I state under penalty of perjury under the laws of the United States of America
that the foregoing is true and correct.
Executed on
, 20_____.
28
WE ASK FOR THIS:
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624.3000
Facsimile: (757) 624.3169
senoona@kaufcan.com
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: (415) 875-6600
Facsimile: (415) 875-6700
davidbilsker@quinnemanuel.com
davidperlson@quinnemanuel.com
Attorneys for IAC Search & Media, Inc.,
Gannett Company, Inc., Google Inc. and
Target Corporation
/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: (757) 624-3000
Facsimile: (757) 624-3169
senoona@kaufcan.com
Gerald F. Ivey
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
901 New York Avenue, N.W.
Washington, D.C. 20001-4413
Telephone: (202) 408-4000
gerald.ivey@finnegan.com
29
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
Two Freedom Square
11955 Freedom Drive, Suite 800
Reston, VA 20190-5675
Telephone: (571) 203-2700
robert.burns@finnegan.com
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street NE
Atlanta, GA 30308
Tel: 404.653.6400
cortney.alexander@finnegan.com
Attorneys for Defendant AOL Inc.
/s/ Donald C. Schultz
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: (757) 623-3000
Facsimile: (757) 623-5735
dschultz@cwm-law.cm
wrsnow@cwm-law.com
sstancliff@cwm-law.com
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: (202) 420-2200
Facsimile: (202) 420-2201
sherwoodj@dicksteinshapiro.com
brothersk@dicksteinshapiro.com
Counsel for Plaintiff, I/P Engine, Inc.
11498267_1.DOC
30
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