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Uniloc USA, Inc. v. HTC America, Inc

United States District Court, W.D. Washington, Seattle

July 19, 2018

UNILOC USA, TNC. and UNILOC LUXEMBOURG, S.A., Plaintiffs,
v.
HTC AMERICA, INC. Defendant.

          Aaron S. Jacobs (Pro Hac Vice) James J. Foster (Pro Hac Vice) PRINCE LOBEL TYE LLP Al Van Kampen, WSBA No. 13670 VAN KAMPEN & CROWE PLLC ATTORNEYS FOR PLAINTIFFS

          Fred I. Williams (pro hac vice) Mario A. Apreotesi (pro hac vice) VINSON & ELKLNS LLP Molly A. Terwilliger, WSBA No. 28449 YARMUTH WILSDON PLLC Todd Landis (pro hac vice) Eric Klein (pro hac vice) VINSON & ELKINS LLP ATTORNEYS FOR DEFENDANT

          STIPULATED PROTECTIVE ORDER REGARDING THE DISCLOSURE AND USE OF DISCOVERY MATERIALS

          HONORABLE JAMES L. ROBART UNITED STATES DISTRICT JUDGE.

         WHEREAS Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg, S.A., (collectively, "Uniloc" or "Plaintiff) and Defendant HTC America, Inc. ("HTC" or "Defendant") anticipate that documents, testimony, or information containing or reflecting confidential, proprietary, trade secret, and/or commercially sensitive information are likely to be disclosed or produced during the course of discovery, initial disclosures, and supplemental disclosures in the above-captioned case ("the Case"), see Dkt #24 (Joint Status Report), the Parties request that the Court enter this Order setting forth the conditions for treating, obtaining, and using such information. This Order is consistent with the Local Rules in that "it does not purport to confer blanket protection on all disclosures or responses to discovery, its protection from public disclosure and use extends only to the limited information or items that are entitled to confidential treatment under the applicable legal principles, and it does not presumptively entitle the parties to file confidential information under seal." Local Rules W.D. Wash. LCR 26(c). The Parties have previously agreed and are subject to a protective order with substantially similar terms as those contained herein in a patent lawsuit in another district. See Uniloc USA, Inc., et al. v. HTC America, Inc., No. 2:16-cv-989-JRG, consolidated: Uniloc USA, Inc. v. Motorola Mobility LLC, No. 2:16-cv-992-JRG, Dkt. No. 131 (E.D. Tex.) (stayed pending inter partes review).

         Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, the Court finds good cause for the following Agreed Protective Order Regarding the Disclosure and Use of Discovery Materials ("Order" or "Protective Order").

         1. PURPOSES AND LIMITATIONS

         (a) Protected Material designated under the terms of this Protective Order shall be used by a Receiving Party solely for the Case, and shall not be used directly or indirectly for any other purpose whatsoever.

         (b) The Parties acknowledge that this Order does not confer blanket protections on all disclosures during discovery, or in the course of making initial or supplemental disclosures under Rule 26(a). Designations under this Order shall be made with care and shall not be made absent a good faith belief that the designated material satisfies the criteria set forth below. If it comes to a Producing Party's attention that designated material does not qualify for protection at all, or does not qualify for the level of protection initially asserted, the Producing Party must promptly notify all other Parties that it is withdrawing or changing the designation.

         2. DEFINITIONS

         (a) "Discovery Material" means all items or information, including from any non-party, regardless of the medium or manner generated, stored, or maintained (including, among other things, testimony, transcripts, or tangible things) that are produced, disclosed, or generated in connection with discovery or Rule 26(a) disclosures in. the Case.

         (b) "Outside Counsel" means (i) outside counsel who appear on the pleadings as counsel for a Party and (ii) partners, associates, and staff of such counsel to whom it is reasonably necessary to disclose the information for this litigation.

         (c) "In-house Counsel" means attorneys who are employees of a Party and are working on this litigation, and includes supporting personnel employed by those counsel, such as paralegals, but specifically excludes any inventor of a patent-in-suit. For a Party that does not employ any attorneys, In-house Counsel shall include one (1) non-attorney individual working on this litigation as an employee as that Party, but specifically excludes any inventor of a patent-in-suit.

         (d) "Patents-in-suit" means U.S. Patent No. 7, 653, 508, U.S. Patent No. 7, 881, 902, U.S. Patent No. 8, 712, 723 and any other patent asserted in the Case.

         (e) "Party" means any party to the Case,, including all of its officers, directors, employees, consultants, retained experts, and Outside Counsel and their support staff.

         (f) "Producing Party" means any Party or non-party that discloses or produces any Discovery Material in the Case.

         (g) "Protected Material" means any Discovery Material that is designated as "CONFIDENTIAL," "HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY," or "HIGHLY CONFIDENTIAL - SOURCE CODE," as provided for in this Order. Protected Material shall not include: (i) advertising materials that have been actually published or publicly disseminated; and (ii) materials that show on their face they have been disseminated to the public.

         (h) "Receiving Party" means any Party who receives Discovery Material from a Producing Party.

         (i) "Source Code" means a text listing of computer instructions, commands and data definitions expressed in a form suitable for input to an assembler, compiler, or other translator to be compiled or assembled into an executable computer program.

         3. COMPUTATION OF TIME

         The computation of any period of time prescribed or allowed by this Order shall be governed by the provisions for computing time set forth in Federal Rule of Civil Procedure 6.

         4. SCOPE

         (a) The protections conferred by this Order cover not only Discovery Material governed by this Order as addressed herein, but also any information copied or extracted therefrom, as well as all copies, excerpts, summaries, or compilations thereof, plus testimony, conversations, or presentations by Parties or their counsel in Court or in other settings that might reveal Protected Material.

         (b) Nothing in this Protective Order shall prevent or restrict a Producing Party's own disclosure or use of its own Protected Material for any purpose, and nothing in this Order shall preclude any Producing Party from showing its Protected Material to an individual who prepared the Protected Material.

         (c) Nothing in this Order shall be construed to prejudice any Party's right to use any Protected Material in Court or in any Court filing with the consent of the Producing Party or by order of the Court, (d) This Order is without prejudice to the right of any Party to seek further or additional protection of any Discovery Material or to modify this Order in any way, including, without limitation, an order that certain matter not be produced at all.

         5. DURATION

         Even after the termination of the Case, the confidentiality obligations imposed by this Order shall remain in effect until a Producing Party agrees otherwise in writing or a Court order otherwise directs.

         6. ACCESS TO AND USE OF PROTECTED MATERIAL

         (a) Basic Principles.

         All Protected Material shall be used solely for the Case or any related appellate proceeding, and not for any other purpose whatsoever, including without limitation any other litigation, patent prosecution or acquisition, patent reexamination, reissue, inter partes review, covered business method review, or other post-grant review proceedings, or any business or competitive purpose or function. Protected Material shall not be distributed, disclosed or made available to anyone except as expressly provided in this Order.

         (b) Patent Prosecution Bar.

         Absent the written consent of the Producing Party, any person employed by, related to, or representing Plaintiffs who is permitted to and in fact receives any of Defendant's materials designated "HIGHLY CONFIDENTIAL -ATTORNEY'S EYES ONLY" or "HIGHLY CONFIDENTIAL - SOURCE CODE" and directed to technical information relevant to the Case, but excluding financial data or nontechnical business information (collectively, "HIGHLY SENSITIVE TECHNICAL MATERIAL"), in accordance with this Order, shall not, on behalf of Plaintiffs or their acquirer, successor, predecessor, or other affiliate, prepare, prosecute, or assist in the preparation or prosecution of any patent application relating to the subject matter of the Patents-in-suit and corresponding to the produced technical information, i.e., monitoring and evaluating periodic human activity based on inertial sensor data, before any foreign or domestic agency, including the United States Patent and Trademark Office. To ensure compliance with the purpose of this provision, each Party shall create an "Ethical Wall" between those persons with access to HIGHLY SENSITIVE TECHNICAL MATERIAL in accordance with this Order, and any individuals who, on behalf of Plaintiffs or their acquirer, successor, predecessor, or other affiliate, prepare, supervise, or assist in the preparation or prosecution of any patent application relating to the accused functionalities as stated above. These prohibitions shall not preclude Plaintiffs' litigation counsel from participating in any inter partes review proceedings. However, if and when claim amendments are considered in such an inter partes review, Plaintiffs' litigation counsel participating in that inter partes review must at that time either end their involvement in that inter partes proceeding or request leave of court to continue their participation in that proceeding. Litigation counsel who are the subject of such a request shall not provide input on any proposed claim amendments while the motion for leave is pending, and the Producing Party will agree to reasonable measures to expedite consideration of that motion (such as an expedited briefing schedule that allows for at least one week for the filing of an opposition). If leave of court is granted, then Plaintiffs' litigation counsel may continue to represent Plaintiffs in the litigation and the inter partes proceeding at issue, even though amendments are considered. If leave is denied, then those counsel with access to HIGHLY SENSITIVE TECHNICAL MATERIALS shall withdraw from representation in, and shall not provide any input concerning, that inter partes review. The prohibitions of this paragraph shall begin when the HIGHLY SENSITIVE TECHNICAL MATERIALS are first received by the affected individual, and shall end one (1) year after the settlement and/or dismissal of the Producing Party Defendant from this Case or the final non-appealable termination of this Case.

         (c) Patent Acquisition Bar.

         Absent the written consent of the Producing Party, any person employed by, related to, or representing Plaintiffs who is permitted to and in fact receives any of Defendant's HIGHLY SENSITIVE TECHNICAL MATERIAL in accordance with this Order, shall not advise, counsel, participate, or assist in the acquisition of any patents or patent applications that (1) relate to the subject matter of the Patents-in-suit; or (2) relate to the subject matter of the HIGHLY SENSITIVE TECHNICAL MATERIAL that such individual reviewed. For the avoidance of doubt, the "acquisition" of patents under this section includes any analysis or evaluation of patents for the purposes of evaluating whether, or for what price, to acquire them. These prohibitions shall begin when the HIGHLY SENSITIVE TECHNICAL MATERIALS are first received by the affected individual, and shall end one (1) year after the settlement or dismissal of the Producing Party Defendant from this Case or the final nonappealable termination of this Case.

         (d) Secure Storage, No. Export.

         Protected Material must be stored and maintained by a Receiving Party at a location in the United States and in a secure manner that ensures that access is limited to the persons authorized under this Order. Materials designated "HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY" or "HIGHLY CONFIDENTIAL - SOURCE CODE" produced by Defendant shall not be taken or reviewed outside the United States unless expressly agreed to in writing by the Producing Party. If a deposition of a Producing Party's employee or 30(b)(6) designee occurs outside the United States, that Producing Party's Protected Materials may be taken outside the United States solely for purposes of their use at that deposition. Any materials designated "HIGHLY CONFIDENTIAL - SOURCE CODE" are subject to the restrictions in Section 10.

         (e) Legal Advice Based on Protected Material.

         Nothing in this Protective Order shall be construed to prevent counsel from advising their clients with respect to the Case based in whole or in part upon Protected Materials, provided counsel does not disclose the Protected Material itself except as provided in this Order.

         (f) Limitations.

         Nothing in this Order shall restrict in any way a Producing Party's use or disclosure of its own Protected Material. Nothing in this Order shall restrict in any way the use or disclosure of Discovery Material by a Receiving Party: (i) that is or has become publicly known through no fault of the Receiving Party; (ii) that is lawfully acquired by or known to the Receiving Party independent of the Producing Party; (iii) previously produced, disclosed and/or provided by the Producing Party to the Receiving Party or a nonparty without an obligation of confidentiality and not by inadvertence or mistake; (iv) with the consent of the Producing Party; or (v) pursuant to order of the Court. However, if the accuracy of information is confirmed only through the review of Protected Material, then the information shall not be considered to be publicly known. For example, unsubstantiated media speculations or rumors that are later confirmed to be accurate through access to Protected Material are not "publicly known" information. Such information is explicitly included in the definition of "Protected Material" set forth in paragraph 2(g) above.

         7. DESIGNATING PROTECTED MATERIAL

         (a) Available Designations.

         Any Producing Party may designate Discovery Material with any of the following designations, provided that it meets the requirements for such designations as provided for herein: "CONFIDENTIAL," "HIGHLY CONFIDENTIAL -ATTORNEYS' EYES ONLY" or "HIGHLY CONFIDENTIAL - SOURCE CODE."

         (b) Written Discovery and Documents and Tangible Things.

         Written discovery, documents (which include "electronically stored information," as that phrase is used in Federal Rule of Civil Procedure 34), and tangible things that meet the requirements for the confidentiality designations listed in paragraph 7(a) may be so designated by placing the appropriate designation on every page of the written material prior to production. For digital files being produced, the Producing Party may mark each viewable page or image with the appropriate designation, and mark the medium, container, and/or communication in which the digital files were contained. In the event that original documents are produced for inspection, the original ...


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