Case 1:13-cv-00919-LPS Document 217-1 Filed 09/01/20 Page 1 of 7 PageID #: 6282
`Case 1:13-cv-00919—LPS Document 217-1 Filed 09/01/20 Page 1 of 7 PageID #: 6282
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 1:16-cv-00581-RGA Document 87 Filed 10/19/18 Page 1 of 6 PageID #: 1026Case 1:13-cv-00919-LPS Document 217-1 Filed 09/01/20 Page 2 of 7 PageID #: 6283
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`T-JAT SYSTEMS 2006 LTD.,
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`Plaintiff,
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`V.
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`EXPEDIA, INC. (DE) and ORBITZ
`WORLDWIDE, INC. ,
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`Defendants.
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`C.A. No. 16-cv-581-RGA
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`ORDER
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`Presently before the Court is the issue of whether two of T-Jat' s employees, Dr.
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`Golobrodsky and Mr. Vershavsky, may access documents designated Attorney' s Eyes Only
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`(AEO). I have considered the parties' papers. (D.I. 76, 77, 82, 84). I held a discovery
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`conference on October 15, 2018.
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`Inherent in a court's power under Federal Rule of Civil Procedure 26 is the ability to
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`restrict an individual ' s access to confidential information when there is "an unacceptable
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`opportunity for inadvertent disclosure." See U S. Steel Corp. v. United States, 730 F.2d 1465,
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`1468 (Fed. Cir. 1984). The Federal Circuit has made clear that limits to attorney access should
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`be judged on "a counsel-by-counsel basis, and cannot be determined solely by giving controlling
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`weight to the classification of counsel as in-house rather than retained." Id. " [T]he counsel-by(cid:173)
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`counsel determination should turn on the extent to which counsel is involved in 'competitive
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`decisionmaking' with its client." In re Deutsche Bank Trust Co. Ams., 605 F.3d 1373, 1378
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`(Fed. Cir. 2010). Competitive decisionmaking is "shorthand for a counsel' s activities,
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`association, and relationship with a client that are such as to involve counsel ' s advice and
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`participation in any or all of the client's decisions (pricing, product design, etc.) made in light of
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`similar or corresponding information about a competitor." Id. (quoting US. Steel, 730 F.2d at
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`1468 n.3). Even if a court is satisfied that a risk of inadvertent disclosure or misuse exists, the
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`court "must balance this risk against the potential harm to the opposing party" in deciding the
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`scope of the protective order. Id. at 1380.
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`Although T-Jat does not have in-house counsel and is requesting access for non-attorney
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`employees, I believe the principles set out in US. Steel still apply. See, e.g., McAirlaids, Inc. v.
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`Kimberly-Clark Corp., 299 F.R.D. 498, 500-01 (W.D. Va. 2014). Whether "an unacceptable
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`opportunity for inadvertent disclosure" exists depends on the extent to which Dr. Golobrodsky
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`and Mr. Vershavsky are involved in competitive decisionmaking at T-Jat. This risk of
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`inadvertent disclosure should then be balanced against the potential harm to T-J at if Dr.
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`Golobrodsky and Mr. Vershavsky cannot access the AEO materials.
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`T-Jat suggests a different framework altogether. T-Jat cites to three cases, all by the
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`same judge, that say essentially the same thing. That is, it was the practice of the judge to give at
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`least one person "from the company" access to all the documents. (D.I. 77 at 3). It may be that
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`all three cases reached the right result, but I think T-Jat attempts to make the judge's practice into
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`a legal rule. I do not think the case law supports such a finding. For example, in Safe Flight
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`Instrument Corp. v. Sundstrand Data Control Inc., 682 F. Supp. 20 (D. Del. 1988), the court
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`cites numerous cases for the proposition that a party' s "technical information" would only be
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`disclosed to opposing "trial counsel" and "independent experts" despite the opposing party' s
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`request that it be submitted to at least one employee of the opposing party. Id. at 22. Likewise,
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`other courts in more recent cases have declined to allow client employees access to confidential
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`2
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`information when those employees are competitive decisionmakers. See McAirlaids , 299 F.R.D.
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`at 501; 3M Co. v. ACS Indus., Inc., 2015 WL 13484695, at *2-3 (D. Minn. Dec. 2, 2015); Wanke
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`Cascade Distrib. Ltd. v. Forbo Flooring, Inc., 2014 WL 12648465, at *2-3 (D. Or. Apr. 11 ,
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`2014).
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`Here, unlike in much of the case law, the parties are not direct competitors. See, e.g. ,
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`Safe Flight, 682 F. Supp. at 21. Therefore, additional analysis is required to determine what
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`harm to Defendants, if any, might result from inadvertent disclosure. 1 T-Jat argues that neither
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`Dr. Golobrodsky nor Mr. Vershavsky are competitive decisionmakers "in the sense of any
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`competition with Expedia." (D.I. 77 at 2). I disagree. The parties' market relationship, though
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`relevant, is not dispositive of whether T-Jat' s employees are competitive decisionmakers. See
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`Blackbird Tech LLC v. Serv. Lighting & Elec. Supplies, Inc., 2016 WL 2904592, at *4 (D. Del.
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`May 18, 2016). I think the key question is whether "Defendants' trade secrets and other
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`sensitive information could potentially be of value to [T-Jat]." R.R. Donnelley & Sons Co. v.
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`Quark, Inc., 2007 WL 61885, at *2 n.2 (D. Del. Jan. 4, 2007).
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`Defendants' "core technical documents," produced as an example of materials that
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`Defendants would designate as AEO, show a detailed presentation on Expedia' s backend
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`systems. (D.I. 82 at 1, Exs. 7-10). Defendants assert, "[I]t will be challenging for T-Jat not to
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`use that information in connection with its own business."2 (Id. at 1). On the other hand, T-Jat
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`1 I believe this is a preliminary issue. If inadvertent disclosure by T-Jat' s employees poses no risk of
`harm to Defendants, Defendants will fail to show good cause for the proposed protective order
`irrespective of the employees ' decisionmaking power. This is consistent with the Federal Circuit' s
`definition for competitive decisionmaker, which asks to what extent one influences the client's decisions
`in light of "information about a competitor." US. Steel, 730 F.2d at 1468 n.3 (emphasis added).
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`2 In an earlier letter Defendants also argued that "the technology Expedia will disclose is the focus of at
`least one of the products T-Jat markets," and "T-Jat has long been involved in litigation and licensing
`involving the asserted patents and has said that it intends to bring additional lawsuits." (D.I. 76 at 1-2).
`During the discovery conference, however, T-Jat denied both allegations and Defendants indicated that
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`3
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`argues that there is no risk of competition, because it "markets a platform to enable simultaneous
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`web access from multiple devices and communication channels" while Expedia provides "travel(cid:173)
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`related services and software." (D.I. 77 at 1).
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`Based on the present record, it is not clear exactly what value T-Jat may derive from
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`Defendants' confidential information. But, it appears that both T-Jat and Expedia provide
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`technology-based products/services. Given the fact that this is a patent infringement action, it
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`seems likely that, even if T-Jat and Expedia do not have competing products/services, they
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`employ overlapping technology in those products/services. Therefore, the parties share an
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`interest in the same technological field. T-Jat would gain a competitive advantage if it
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`inadvertently used knowledge from Defendants' AEO materials in its own research and
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`development. 3 Therefore, I think Defendants have shown a sufficient likelihood of harm from
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`inadvertent disclosure to require further analysis of whether Dr. Golobrodsky and Mr.
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`Vershavsky are competitive decisionmakers.
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`I believe Dr. Golobrodsky is a competitive decisionmaker. Dr. Golobrodsky is T-Jat' s
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`Chief Science Officer and oversees "technical operations." In addition, he is a founder,
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`shareholder, and listed inventor on both asserted patents. T-Jat represented during the discovery
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`conference that it has about ten employees in total, including employees at related companies. It
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`seems probable that Dr. Golobrodsky plays a large role in most, if not all, of T-Jat' s technical
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`decisions. Therefore, I find it likely that Dr. Golobrodsky has both the expertise and
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`they know very little about T-Jat' s business. I do not think T-Jat gave a clear explanation of its business
`in the papers or during the discovery conference.
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`3 T-Jat represented at the discovery conference that its patent portfolio with the asserted patents is
`"mature," and that the only patent it is currently prosecuting covers an unrelated technology. Therefore,
`any risk of competitive advantage will likely relate to T-Jat' s use, rather than patenting, of Defendants'
`technology.
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`4
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`management control to inadvertently use the information from Defendant's AEO materials to T(cid:173)
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`Jat's competitive advantage.
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`Mr. Vershavsky does not appear to be a competitive decisionmaker, at least to the same
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`extent as Dr. Golobrodsky. Mr. Vershavsky is a shareholder in a related company and a
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`"qualified technician." (D.I. 77 at 2). He works at T-Jat "in the capacity of operations, high
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`level quality assurances, and overall logistical support," and "is not involved in any management
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`capacity." (Id.). Unlike Dr. Golobrodsky, Mr. Vershavsky seems to have limited control over
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`which technologies T-Jat pursues and how that technology is monetized.
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`T-Jat argues that Dr. Golobrodsky and Mr. Vershavsky need to have access to the AEO
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`materials to effectively decide "case strategy" and "assist in the technical aspects of the case."
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`(D.I. 77 at 2). "The risk of inadvertent disclosure cannot be overcome by the mere contention
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`that access to confidential information is necessary for case management." R.R. Donnelley, 2007
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`WL 61885, at *1. Further, I doubt that either Dr. Golobrodsky or Mr. Vershavsky are uniquely
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`qualified to "assist in the technical aspects of the case"-the same role could be played by a
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`third-party expert. Although Mr. Vershavsky does not appear to have the same decisionmaking
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`power as Dr. Golobrodsky, I believe, given his technical expertise and T-Jat' s small size, there is
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`still a risk that he will inadvertently apply the technical knowledge acquired from Defendants'
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`AEO materials to T-Jat's advantage. " It is very difficult for the human mind to
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`compartmentalize and selectively suppress information once learned, no matter how well(cid:173)
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`intentioned the effort may be to do so." In re Deutsche Bank, 605 F.3d at 1378 (citation and
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`brackets omitted). Therefore, on balance, I think the risk of harm to Defendants from inadvertent
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`disclosure outweighs any harm to T-Jat from not having Dr. Golobrodsky and Mr. Vershavsky
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`access the confidential information. It should not be an unacceptable hardship for T-Jat to rely
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`5
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`on litigation counsel and outside experts to review the AEO materials. "This is a necessary
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`consequence of achieving a balance between full disclosure in discovery and protection against
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`economic injury." McAirlaids, 299 F.R.D. at 501-02.
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`The parties should resubmit the proposed protective order in conformity with this Order.
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`IT IS SO ORDERED this f q day of October 2018.
`~-~
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`UnitedStatesistrict Judge
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`6
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