Opinion
Case No.: C02-04709 JF
July 9, 2003
ROBERT T. HASLAM, MICHAEL K. PLIMACK, HELLER EHRMAN WHITE McAULIFFE LLP, Menlo Park, CA, for Plaintiffs HEWLETT-PACKARD COMPANY and HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.
MARK E. FERGUSON, CHRIS LANDGRAFF, STEVEN E. DERRINGER, BARTLIT BECK HERMAN PALENCHAR SCOTT, Chicago, IL, for Plaintiffs HEWLETT-PACKARD COMPANY and HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.
Chris R. Ottenweller, Eric L. Wesenberg, Mark R. Weinstein, Todd Briggs ORRICK, HERRINGTON SUTCLIFFE LLP, Menlo Park, California, for Defendant EMC Corporation.
STIPULATED PROTECTIVE ORDER REGARDING CONFIDENTIALITY OF DISCOVERY MATERIALS AND ADDENDUM THERETO
WHEREAS, in accordance with Fed.R.Civ.P., Rule 26(c), to protect the legitimate interests of the parties in maintaining the confidentiality of certain sensitive or proprietary information,
IT IS HEREBY ORDERED:
1. Scope
This order shall be applicable to and govern all documents, things and information produced or furnished during the course of this action, including initial disclosures, depositions, documents produced in response to requests for production of documents, answers to interrogatories, responses to requests for admissions and all other discovery, as well as pleadings, briefs, memoranda, or other materials furnished by or on behalf of any party to this action or nonparty.
2. Definitions
(a) "Discovery materials" means anything produced as initial disclosures or in response to discovery requests, including, but not limited to, documents, things, deposition testimony, answers to interrogatories and requests for admissions.
(b) "Producing Party" or "Designating Party" means a party to this action or any nonparty, on behalf of which documents, things or information are furnished or produced, during the course of this litigation, in response to requests for production of documents, interrogatories, requests for admissions, depositions, subpoenas, or any other request for discovery pursuant to the Federal Rules of Civil Procedure, or in the form of pleadings, briefs, memoranda, or other form of information produced or furnished by or on behalf of such a party or nonparty.
(c) "Independent Outside Expert" means (i) an expert or consultant retained for the purpose of this litigation, not a current employee of a party or of a person or entity affiliated with a party, (ii) who is not currently involved in prosecuting patents for or on behalf of any party, and (iii) who agrees for a period of two years following the conclusion of the litigation not to be involved in the prosecution of patents for or on behalf of any party. An "Independent Outside Expert" may be an employee of an entity or person itself qualifying as an "Independent Outside Expert" under this paragraph.
(d) "Confidential Information" shall mean confidential proprietary technical, scientific or business discovery materials which the producing party, in good faith, believes comprise "trade secret or other confidential research, development, or commercial information" within the meaning of Rule 26(c)(7), Fed.R.Civ.P., that is designated as such by the producing party pursuant to Paragraph 3 hereof. See Addendum hereto.
(e) "Highly Confidential" shall mean extremely sensitive Confidential Information, including information which is commercial, pricing, costing, or marketing information relating to the producing party or the producing party's commercial products or planned commercial products, or technical and research information that is extremely sensitive and which is designated as such by the producing party pursuant to Paragraph 3 hereof.
(f) "Restricted Confidential" shall mean Confidential Informaion that constitute pending patent applications, research that reasonably could lead to a patent application, and research and development that has not progressed to the stage of being considered for implementation in commercial products, and that are designated as such by the producing party pursuant to Paragraph 3 hereof.
3. Designation of Confidential Information
(a) Documents, things, and portions thereof, shall be designated as confidential by stamping or otherwise marking them with the words "Confidential," "Highly Confidential," or "Restricted Confidential" as the case may be. In the case of multi-page documents, each page which is designated as "Confidential," "Highly Confidential," or "Restricted Confidential" shall be appropriately stamped.
(b) Any party or nonparty may designate the deposition testimony of any witness or any portion thereof (including any exhibit) as "Confidential," "Highly Confidential," or "Restricted Confidential" by advising the reporter and all parties of such fact on the record during the deposition or in writing at any time within twenty-one days after actual receipt of the transcript by counsel for the designating party. The reporter shall also be advised to limit distribution of the transcripts to outside counsel for the parties and the deponent (or his or her attorney). For twenty-one days following the actual receipt of the transcript by counsel, the transcript shall be treated as "Restricted Confidential," unless the designating party has already designated the transcript during the deposition.
4. Initial Inspection of Documents and Things
Designation of produced documents and things as "Confidential," "Highly Confidential," or "Restricted Confidential" may be made by the producing party after an initial inspection and before copying. If the producing party elects not to make such designation before an initial inspection, all documents produced for inspection and the information contained therein shall be treated as "Confidential" unless and until the documents containing such information are otherwise designated and such other designations are communicated to the non-designating party.
5. Use of Discovery Materials Designated as "Confidential," "Highly Confidential." or "Restricted Confidential."
Discovery materials designated "Confidential," "Highly Confidential," or "Restricted Confidential" and the information contained therein, shall be used only in connection with the conduct of this action (including use in briefs, memoranda, correspondence and other documents relating thereto) and shall not be used for any other purpose except upon written consent of the designating party or upon order of the Court. This Stipulation and Order has no effect upon, and shall not apply to (a) any producing party's use of its own "Confidential," "Highly Confidential," or "Restricted Confidential" materials for any purpose or (b) any person's use, for any purpose, of documents or other information developed or obtained independently of discovery in this action.
Furthermore, nothing in this Stipulation and Order shall bar or otherwise restrict any attorney from rendering advice to a party-client in this action and, in the course thereof, relying upon such attorney's knowledge of "Confidential," "Highly Confidential," or "Restricted Confidential" information; provided, however, that in rendering such advice and in otherwise communicating with such client, the attorney shall not disclose any "Confidential," "Highly Confidential," or "Restricted Confidential" information to persons not authorized under this Stipulation and Order without obtaining prior written approval from the Producing Party.
6. Restrictions on the Disclosure of Discovery Materials Designated "Confidential."
Discovery materials designated "Confidential," and the information contained therein, shall not be disclosed to any person except:
(a) Outside counsel for the non-designating party (including law firm personnel and document processing vendors assisting them in this litigation);
(b) In-house lawyers for the non-designating party;
(c) Employees of the non-designating party who may use their knowledge and expertise to assist legal counsel, but only as reasonably necessary in support of this litigation;
(d) Independent Outside Experts retained by the non-designating party;
(e) Any person who is or may be a witness in this action, and counsel for such person, to the extent authorized by Paragraph 8 below;
(f) Court personnel and court reporters; and
(g) Other persons only upon consent of the producing party or upon order of the Court. Administrative/clerical staff of individuals identified in categories (b)-(g) above may have access to "Confidential" information to the extent reasonably necessary for such individuals to accomplish their roles.
7. Restrictions on the Disclosure of Discovery Materials Designated as "Highly Confidential" And "Restricted Confidential."
Discovery materials designated "Highly Confidential," and the information contained therein, shall not be disclosed to or discussed with any person except:
(a) Those described in Paragraphs 6(a), (d)-(g);
(b) Paul Roeder, William Streeter, Steven Webb of HP and Leanne Fitzgerald, Krish Gupta, and William Clark of EMC;
(c) Up to twelve (12) employees of the non-designating party who may use their knowledge and expertise to assist legal counsel or, but only as reasonably necessary in support of this litigation;
Discovery materials designated as "Restricted Confidential," and the information contained therein, shall not be disclosed to or discussed with any person except persons who are described in Paragraphs 7(a) and (b). Further, under no circumstances shall discovery materials designated as "Restricted Confidential" or the information contained therein be disclosed or discussed with any person (including persons described in Paragraphs 7(a), and (b)) who is (i) presently substantively involved in the prosecution of patents for or on behalf of any party or (ii) expects to be substantively involved in the prosecution of patents for or on behalf of any party during the litigation or for two years following the conclusion of the trial in this action (or the conclusion of the litigation, whichever is sooner).
Prior to disclosure of any discovery materials designated "Restricted Confidential" to any person described in Paragraphs 6(d), (e) or (g) or 7(b), each such person shall certify (in the form in Exhibit A attached hereto) that he or she (i) is not presently substantively involved in the prosecution of patents for or on behalf of any party and (ii) shall not have substantive involvement in the prosecution of patents for or on behalf of any party during the litigation or for two years following the conclusion of the trial in this action (or the conclusion of the litigation, whichever is sooner).
Nothing in this Paragraph 7 is intended or should be read to prohibit or restrict members of any outside counsel's law firm who are not involved in this litigation from prosecuting patents for or on behalf of one of the parties, provided that an ethical wall is established to ensure that such members do not have access to any confidential discovery materials of the opposing party.
8. Disclosure to Witnesses.
(a) Any person currently employed by a party or retained as an expert witness by a party may be examined at trial or upon deposition concerning any discovery materials designated by such party as "Confidential," or "Highly Confidential," or "Restricted Confidential."
(b) Documents designated "Confidential," "Highly Confidential," or "Restricted Confidential" may be disclosed without prior notice to the producing party to a person other than those identified in Paragraph 8(a) who is or may be a witness only if the document indicates on its face that the person was an author, addressee or recipient of the document, or the document came from such person's files.
(c) Before a party may examine as a witness at deposition any person other than those identified in Paragraphs 8(a) or (b) concerning discovery materials designated "Confidential," "Highly Confidential," or "Restricted Confidential," the examining party shall, at least one week prior to such examination, notify the producing party, in writing, of its intent to examine such person concerning such materials. A producing party receiving a notification of intent to examine concerning "Confidential," "Highly Confidential," or "Restricted Confidential" material may object to the proposed examination by giving written notice of such objection, including the basis for such objection, to the party seeking to conduct the examination. Such notice shall be delivered within three calendar days of counsel's actual receipt of the notification of intent to examine to which objection is made. If an objection is made, the proposed examination shall not take place until the objection is resolved by agreement of the parties or determined by the Court. Failure to object within the time period set forth above shall be deemed a consent.
9. Certification of Persons to Whom Discovery Materials are Disclosed.
Prior to disclosure of any discovery materials designated "Confidential" to any person described in Paragraphs 6(b)-(d), disclosure of discovery materials designated "Highly Confidential" to any person described in Paragraphs 6(b), 6(d), 7(b) or 7(c) disclosure of discovery materials designated "Restricted Confidential" to any person described in Paragraphs 6(b), 6(d), (b) or 7(c), or disclosure of discovery materials designated "Confidential," "Highly Confidential," or "Restricted Confidential" to any nonparty witness pursuant to Paragraph 8, each such person shall read a copy of this Stipulation and Order and read and sign a certificate in the form of Exhibit A attached hereto (conformed to refer to the category or categories of discovery materials to which such person is permitted access).
Further, no fewer than ten (10) calendar days in advance of the initial disclosure of confidential discovery materials to any employee pursuant to Paragraph 7(c) (materials designated "Highly Confidential") or to any Independent Outside Expert pursuant to Paragraphs 6(d) (materials designated "Confidential," "Highly Confidential," or "Restricted Confidential") the party proposing to disclose such materials shall submit in writing to counsel for the other parties in following:
(i) the name, address, and job title of such person;
(ii) the name and address of his or her employer;
(iii) the employment history of the person (in the case of an Independent Outside Expert); and
(iv) a certificate in the form of Exhibit A, attached hereto, signed by the person (conformed to refer to the category or categories of discovery materials to which such person is permitted access).
If the opposing party objects to the disclosure of the information to such person, it shall within seven (7) calendar days of receipt of the proposing party's notice, notify the proposing party in writing of its objection and the grounds therefore. If no such objection is made, the proposing party may disclose the information subject to the terms hereof. If, however, the opposing party timely objects to the disclosure and such dispute is not resolved on an informal basis between the proposing party and opposing party as specified herein, the proposing party shall submit such objection to the Court for ruling. In the event of such written objection, the disclosure of discovery materials designated as "Confidential," "Highly Confidential," or "Restricted Confidential" to such an expert shall be withheld pending the ruling of the Court or written agreement between the parties.
10. Resolution of Challenges to Designations.
The parties to this action are not obliged to challenge the designation of any discovery materials as "Confidential," "Highly Confidential," or "Restricted Confidential" at the time of receipt, disclosure, or designation thereof, and a failure to do so shall not preclude a subsequent challenge to the classification of the material. In the event that a receiving party seeks to challenge the appropriateness of any such designation, such party shall consult in good faith with the designating party in an effort to resolve the matter on an informal basis. In the event no agreement is reached, the burden shall be upon the receiving party to seek an order permitting disclosure of the disputed materials. The receiving party shall give no less than five calendar days written notice to the producing party before seeking such an order, identifying (with as much specificity as is practicable) the document or testimony that counsel contends is not entitled to protection. Any document or testimony incorporating confidential material as to which such application to the Court is made shall continue to be treated as "Confidential," "Highly Confidential," or "Restricted Confidential," as the case may be, until the Court rules or the motion is otherwise resolved. The designating party shall have the burden of persuading the Court that good cause exists for the designation of materials as "Confidential," "Highly Confidential," or "Restricted Confidential."
11. Inadvertent or Unintentional Production.
(a) The inadvertent or unintentional production of discovery materials without a confidentiality designation shall not be deemed a waiver in whole or in part of a party's claim of confidential treatment under the terms of this Stipulation and Order. Any document that initially is produced without bearing a confidentiality designation may later be so designated, with respect to future disclosure by the producing party, and the receiving party shall make all reasonable efforts to retrieve all copies, if any, of such document disclosed to persons other than those authorized in Paragraphs 6 and 7 hereof and to prevent further use or disclosure of confidential information contained therein by such persons.
(b) See Hartford Fire Ins. v. Garvey, 109 F.R.D. 323, 331-32 (N.D. Cal. 1985).
12. Protection of Nonparty Discovery Materials.
In the event that any nonparty shall be called upon, by subpoena or otherwise, to provide or produce discovery materials considered confidential or subject to a confidentiality requirement by such nonparty, such nonparty shall become covered by the terms of this Stipulation and Order by notifying outside counsel for all parties in writing. Upon service of such notice, such nonparty may designate discovery materials as "Confidential," "Highly Confidential," or "Restricted Confidential" in the manner set forth in this Stipulation and Order, and such nonparty's "Confidential," "Highly Confidential," or "Restricted Confidential" information shall be treated in the same manner and subject to the same terms as the "Confidential," "Highly Confidential," Restricted Confidential" information of a party to this action.
13. Filing of "Confidential." "Highly Confidential." or "Restricted Confidential" Materials.
(a) The filing with the Court of any discovery materials designated "Confidential," "Highly Confidential," or "Restricted Confidential," or of briefs or other papers containing or referencing such materials, shall be made in conformance with the procedures set forth in the Local Rules of this Court. See Addendum hereto. The Clerk of this Court is to maintain such information under seal, unless the Court denies the motion to seal in which case the clerk will permit a party to retrieve the information prior to its being placed in the public file.
(b) Any discovery materials designated "Confidential," "Highly Confidential," or "Restricted Confidential," or briefs or other papers containing or referencing such materials that are filed with the Court shall be submitted in a sealed envelope or box, with a request to file under seal. Marked on the outside of the sealed envelope or box shall be the title of the action, an identification of the document or thing within, and a statement in substantially the following form:
[CONFIDENTIAL] [HIGHLY CONFIDENTIAL] OR [RESTRICTED CONFIDENTIAL]
FILED UNDER SEAL PURSUANT TO THE PROTECTIVE ORDER OF [DATE] GOVERNING CONFIDENTIALITY OF DOCUMENTS AND INFORMATION OBTAINED DURING THE COURSE OF THIS LITIGATION. THIS ENVELOPE IS NOT TO BE OPENED NOR THE CONTENTS THEREOF DISPLAYED OR REVEALED EXCEPT BY COURT ORDER.
14. Maintenance of "Confidential." "Highly Confidential" or "Restricted Confidential" Materials by the Parties.
All materials designated "Confidential," "Highly Confidential" or "Restricted Confidential" shall be maintained at all times with reasonable precautions taken to ensure that access to such materials is restricted to persons entitled to have such access pursuant to this Stipulation and Order.
15. Use of "Confidential." "Highly Confidential" or "Restricted Confidential" Materials at Trial.
This Stipulation and Order is without prejudice to any party or non-party's right to seek additional protections, or to seek modification of the terms hereof, for purposes of dealing with issues relating to confidentiality and public access to information presented at trial.
16. Return or Destruction of Confidential Materials Upon Termination of This Action.
At the final conclusion of this action (including any appeals) and unless the Court otherwise orders, any discovery materials designated "Confidential," "Highly Confidential" or "Restricted Confidential" and any copies thereof which have been made shall be returned to the producing party or, in the alternative, such materials and any copies thereof shall be certified in writing to have been destroyed, and all work product reflecting an opposing party's confidential information shall be destroyed, except that outside counsel may retain one copy of all papers filed with the Court or offered in evidence, subject to the terms of this Order.
17. Continuing Effectiveness of This Stipulation and Order.
This Stipulation and Order shall continue to be binding after the conclusion of this action, except that a receiving party may seek the written permission of the producing party or further order of the Court with respect to dissolution or modification of this Stipulation and Order.
18. Court Approval.
The parties agree promptly to submit this Stipulation and Order to the Court for approval, and further agree that, pending approval by the Court, this Stipulation and Order shall be effective as if approved and, specifically, that any violation of its terms shall be subject to the same sanctions and penalties as if this Stipulation and Order had been entered by the Court.
SO ORDERED.
I, Mark R. Weinstein, am the ECF User whose identification and password are being used to file this [Proposed] Stipulated Protective Order Regarding Confidentiality of Discovery Materials. Pursuant to General Order 45.X.B, I hereby attest that Chris Landgraff of Bartlit Beck Herman Panelchar Scott, counsel for plaintiffs, has concurred in this filing.
EXHIBIT A TO STIPULATED PROTECTIVE ORDER REGARDING CONFIDENTIALITY OF DISCOVERY MATERIALS AGREEMENT TO MAINTAIN CONFIDENTIALITY
I, ____________, have received and read a copy of the Stipulated Protective Order Regarding Confidentiality of Discovery Materials in this case and I agree to abide by its terms. I understand that I will be authorized to receive materials designated [INCLUDE ALL THAT APPLY: "Confidential," "Highly Confidential" and "Restricted Confidential"], that are subject to various restrictions of use and disclosure, including the restriction that they are to be used solely in connection with this litigation, and not for any business or other purpose whatsoever and that they are not to be disclosed except as provided by the Stipulation and Order Regarding Confidentiality of Discovery Materials. I further agree to submit to the jurisdiction of the United States District Court for the Northern District of California for the purpose of enforcing my compliance with the Stipulation and Order Regarding Confidentiality of Discovery Materials.[Include the following paragraph only if "Restricted Confidential" information is included above:] ________ (initial if applicable) I am not presently substantively involved in the prosecution of patents for or on behalf of any of the parties and I agree to refrain from substantive involvement in the prosecution of patents for or on behalf of any of the parties during this litigation and for two years following the conclusion of the trial in this action (or the conclusion of this litigation, whichever is sooner).
ADDENDUM TO PROTECTIVE ORDER Hewlett-Packard Company, et al., v. EMC Corporation Case No. C02-04709 JF (PVT)
IT IS HEREBY ORDERED as follows:DESIGNATION OF DOCUMENTS
Before designating any specific information "Confidential," "Highly Confidential" or "Restricted Confidential," the designating party's counsel shall make a good faith determination that the information warrants that level of protection under Rule 26(c) of the Federal Rules of Civil Procedure. Counsel should note that not all confidential documents warrant the highest level of protection. This heightened level of protection is appropriate only for the most highly sensitive information; it is warranted only if "the potential injury is substantial and cannot be prevented through the use of any device less restrictive of a party's access to his lawyer." Doe v. Dist. of Columbia, 697 F.2d 1115, 1120 (D.C. Cir. 1983). Thus, the court expects the parties to use the "Restricted Confidential" designation sparingly. See, e.g., THK America v. NSK Co., Ltd., 157 F.R.D. 637 (N.D. Ill. 1993) (revoking party's right to use "attorneys' eyes only" designation as sanction for bad faith overuse of that designation).
Counsel are cautioned that over-designation of documents may result in sanctions. The filing of documents designated "Confidential," "Highly Confidential" or "Restricted Confidential" puts an additional burden on the court. Often the party filing the document is not the designating party. In that situation the party does not have the option to unilaterally de-designate documents before submitting them to the court, and has no choice but to request they be filed under seal. Over-designating documents can thus result in unnecessary work for the court in sorting the documents that deserve sealing from those that do not, as well as additional work for the parties who must then re-file public versions of the non-confidential documents. The best way to avoid this result is for counsel to use best efforts to make appropriate designations at the outset, and to promptly de-designate a document when it comes to counsel's attention that the document is over-designated.
REQUESTS TO FILE DOCUMENTS UNDER SEAL
Any party wishing to file under seal any documents) designated "Confidential," "Highly Confidential" or "Restricted Confidential," shall lodge the document(s) along with a Request for Sealing pursuant to Civil Local Rule 79-5. The documents) shall be submitted in an appropriate envelope labeled with the case name and number and the title of the document(s). Unless otherwise ordered by the Court, WITHIN TEN DAYS AFTER ANY REQUEST FOR SEALING IS FILED, any party claiming confidentiality for the information for which sealing is requested shall serve and file declaration(s) from competent witnesses setting forth specific facts demonstrating that sealing is warranted under rule 26(c). The parties are cautioned that "Broad allegations of harm, however, unsubstantiated by specific examples or articulated reasoning, do not satisfy the Rule 26(c) test." Beckman Indus., Inc. v. International Ins. Co., 966 F.2d 470, 476 (9th Cir. 1992). Further, the factual showing must address separately each portion of the materials that the party contends warrants protection. See Civil Local Rule 79-5 and commentary thereto.