Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 1 of 66 PageID #: 1461
`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 1 of 66 PageID #: 1461
`
`EXHIBIT A
`
`EXHIBIT A
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 2 of 66 PageID #: 1462
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`GODO KAISHA IP BRIDGE 1,
`
`Plaintiff,
`
`v.
`
`OMNIVISION TECHNOLOGIES,
`INC.,
`
`Defendant.
`
` Case No. 1:16-cv-00290-JFB-SRF
`
` PROTECTIVE ORDER
`
`Plaintiff Godo Kaisha IP Bridge 1 (“IPB”) and Defendant OmniVision
`
`Technologies, Inc. (“OmniVision”) 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 this case and request that the Court enter
`
`this Order setting forth the conditions for treating, obtaining, and using such information.
`
`Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, the Court finds good
`
`cause for the following Stipulated Protective Order Regarding the Disclosure and Use of
`
`Discovery Materials (“Order” or “Protective Order”).
`
`1.
`
`PURPOSES AND LIMITATIONS
`
`Disclosure and discovery activity in this action are likely to involve production of
`
`confidential, proprietary, or private information for which special protection from public
`
`disclosure and from use for any purpose other than prosecuting this litigation may be
`
`warranted. Accordingly, the parties hereby stipulate to and petition the Court to enter the
`
`following Protective Order. The parties acknowledge that this Order does not confer blanket
`
`protections on all disclosures or responses to discovery and that the protection it affords
`1
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 3 of 66 PageID #: 1463
`
`from public disclosure and use extends only to the limited information or items that are
`
`entitled to confidential treatment under the applicable legal principles. The parties further
`
`acknowledge, as set forth in paragraph 13.4 below, that D. Del. LR 5.1.3 sets forth the
`
`procedures that must be followed and the standards that will be applied regarding under-seal
`
`filings.
`
`2.
`
`DEFINITIONS
`
`2.1
`
`Challenging Party: a Party or Non-Party that challenges the designation of
`
`information or items under this Order.
`
`2.2
`
`“CONFIDENTIAL” Information or Items: information (regardless of how it
`
`is generated, stored or maintained) or tangible things that qualify for protection under
`
`Federal Rule of Civil Procedure 26(c).
`
`2.3
`
`Counsel (without qualifier): Outside Counsel of Record and House Counsel
`
`(as well as their support staff).
`
`2.4 Designating Party: a Party or Non-Party that designates information or items
`
`that it produces in disclosures or in responses to discovery as “CONFIDENTIAL,”
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY
`
`CONFIDENTIAL – SOURCE CODE.”
`
`2.5 Disclosure or Discovery Material: all items or information, regardless of the
`
`medium or manner in which it is generated, stored, or maintained (including, among other
`
`things, testimony, transcripts, and tangible things), that are produced or generated in
`
`disclosures or responses to discovery in this matter.
`
`2.6
`
`Expert: a person with specialized knowledge or experience in a matter
`
`pertinent to the litigation who (1) has been retained by a Party or its counsel to serve as an
`
`2
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 4 of 66 PageID #: 1464
`
`expert witness or as a consultant in this action, (2) is not a past or current employee of a
`
`Party or of a Party’s competitor, and (3) at the time of retention, is not anticipated to
`
`become an employee of a Party or of a Party’s competitor.
`
`2.7
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” Information
`
`or Items: extremely sensitive “Confidential Information or Items,” disclosure of which to
`
`another Party or Non-Party would create a substantial risk of serious harm that could not be
`
`avoided by less restrictive means.
`
`2.8
`
` “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items:
`
`extremely sensitive “Confidential Information or Items” representing computer code,
`
`physical design files and associated comments and revision histories, formulas, engineering
`
`specifications, recipes, run sheets, or schematics that define or otherwise describe in detail
`
`the algorithms or structure of software or hardware designs, disclosure of which to another
`
`Party or Non-Party would create a substantial risk of serious harm that could not be avoided
`
`by less restrictive means. Physical design files are computer files or documents that show the
`
`physical arrangement of the components of an integrated circuit, also called the circuit
`
`layout, including GDS (Graphic Database System), GDSII stream format, DEF (Design
`
`Exchange Format), LEF (Library Exchange Format), and any other design layout files.
`
`Materials designated as “HIGHLY CONFIDENTIAL – SOURCE CODE” may include
`
`physical design files but may not include circuit schematic files.
`
`2.9 House Counsel: attorneys who are employees of a party to this action. House
`
`Counsel does not include Outside Counsel of Record or any other outside counsel.
`
`2.10 Non-Party: any natural person, partnership, corporation, association, or other
`
`legal entity not named as a Party to this action.
`
`3
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 5 of 66 PageID #: 1465
`
`2.11 Outside Counsel of Record: attorneys who are not employees of a party to
`
`this action but are retained to represent or advise a party to this action and have appeared in
`
`this action on behalf of that party or are affiliated with a law firm which has appeared on
`
`behalf of that party, and includes support staff.
`
`2.12 Party: any party to this action, including all of its officers, directors,
`
`employees, consultants, retained experts, and Outside Counsel of Record (and their support
`
`staffs).
`
`2.13 Producing Party: a Party or Non-Party that produces Disclosure or Discovery
`
`Material in this action.
`
`2.14 Professional Vendors: persons or entities that provide litigation support
`
`services (e.g., photocopying, videotaping, translating, preparing exhibits or demonstrations,
`
`and organizing, storing, or retrieving data in any form or medium) and their employees and
`
`subcontractors.
`
`2.15 Protected Material: any Disclosure or Discovery Material that is designated as
`
`“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
`
`as “HIGHLY CONFIDENTIAL – SOURCE CODE.”
`
`2.16 Receiving Party: a Party that receives Disclosure or Discovery Material from
`
`a Producing Party.
`
`3.
`
`SCOPE
`
`The protections conferred by this Protective Order cover not only Protected Material
`
`(as defined above), but also (1) any information copied or extracted from Protected
`
`Material; (2) all copies, excerpts, summaries, or compilations of Protected Material; and (3)
`
`any testimony, conversations, or presentations by Parties or their Counsel that might reveal
`
`4
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 6 of 66 PageID #: 1466
`
`Protected Material. However, the protections conferred by this Stipulated Protective Order
`
`do not cover the following information: (a) any information that is in the public domain at
`
`the time of disclosure to a Receiving Party or becomes part of the public domain after its
`
`disclosure to a Receiving Party as a result of publication not involving a violation of this
`
`Order, including becoming part of the public record through trial or otherwise; and (b) any
`
`information known to the Receiving Party prior to the disclosure or obtained by the
`
`Receiving Party after the disclosure from a source who obtained the information lawfully
`
`and under no obligation of confidentiality to the Designating Party. Any use of Protected
`
`Material at trial shall be governed by a separate agreement or order. Notwithstanding the
`
`restrictions in this Protective Order, Outside Counsel shall not be precluded from providing
`
`legal advice to its client based on information learned from Protective Information.
`
`4.
`
`DURATION
`
`Even after final disposition of this litigation, the confidentiality obligations imposed
`
`by this Order shall remain in effect until a Designating Party agrees otherwise in writing or a
`
`court order otherwise directs. Final disposition shall be deemed to be the later of (1)
`
`dismissal of all claims and defenses in this action, with or without prejudice; and (2) final
`
`judgment herein after the completion and exhaustion of all appeals, rehearings, remands,
`
`trials, or reviews of this action, including the time limits for filing any motions or
`
`applications for extension of time pursuant to applicable law.
`
`5.
`
`DESIGNATING PROTECTED MATERIAL
`
`5.1
`
`Exercise of Restraint and Care in Designating Material for Protection. Each
`
`Party or Non-Party that designates information or items for protection under this Order
`
`must take care to limit any such designation to specific material that qualifies under the
`
`5
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 7 of 66 PageID #: 1467
`
`appropriate standards. To the extent it is practical to do so, the Designating Party must
`
`designate for protection only those parts of material, documents, items, or oral or written
`
`communications that qualify – so that other portions of the material, documents, items, or
`
`communications for which protection is not warranted are not swept unjustifiably within
`
`the ambit of this Order.
`
`Mass, indiscriminate, or routinized designations are prohibited. Designations that
`
`are shown to be clearly unjustified or that have been made for an improper purpose (e.g., to
`
`unnecessarily encumber or retard the case development process or to impose unnecessary
`
`expenses and burdens on other parties) expose the Designating Party to sanctions.
`
`If it comes to a Designating Party’s attention that information or items that it
`
`designated for protection do not qualify for protection at all or do not qualify for the level of
`
`protection initially asserted, that Designating Party must promptly notify all other parties
`
`that it is withdrawing the mistaken designation.
`
`5.2 Manner and Timing of Designations. Except as otherwise provided in this
`
`Order (see, e.g., second paragraph of section 5.2(a) below), or as otherwise stipulated or
`
`ordered, Disclosure or Discovery Material that qualifies for protection under this Order
`
`must be clearly so designated before the material is disclosed or produced.
`
`Designation in conformity with this Order requires:
`
`(a) for information in documentary form (e.g., paper or electronic documents, but
`
`excluding transcripts of depositions or other pretrial or trial proceedings), that the Producing
`
`Party affix the legend “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –
`
`ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE” to
`
`each page of the document.
`
`6
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 8 of 66 PageID #: 1468
`
`A Party or Non-Party that makes original documents or materials available for
`
`inspection need not designate them for protection until after the inspecting Party has
`
`indicated which material it would like copied and produced. During the inspection and
`
`before the designation, all of the material made available for inspection shall be deemed
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” After the inspecting Party
`
`has identified the documents it wants copied and produced, the Producing Party must
`
`determine which documents, or portions thereof, qualify for protection under this Order.
`
`Then, before producing the specified documents, the Producing Party must affix the
`
`appropriate legend (“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’
`
`EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE”) to each page of the
`
`document.
`
`(b) for testimony given in deposition or in other pretrial or trial proceedings, that the
`
`Designating Party identify on the record, before the close of the deposition, hearing, or other
`
`proceeding, all protected testimony and specify the level of protection being asserted. When
`
`it is impractical to identify separately each portion of testimony that is entitled to protection
`
`and it appears that substantial portions of the testimony may qualify for protection, the
`
`Designating Party may invoke on the record (before the deposition, hearing, or other
`
`proceeding is concluded) a right to have up to 30 days to identify the specific portions of the
`
`testimony as to which protection is sought and to specify the level of protection being
`
`asserted. Only those portions of the testimony that are appropriately designated for
`
`protection within the 30 days shall be covered by the provisions of this Stipulated Protective
`
`Order. Alternatively, a Designating Party may specify, at the deposition or up to 30 days
`
`afterwards if that period is properly invoked, that the entire transcript shall be treated as
`
`7
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 9 of 66 PageID #: 1469
`
`“CONFIDENTIAL” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
`
`“HIGHLY CONFIDENTIAL – SOURCE CODE.”
`
`The use of a document as an exhibit at a deposition shall not in any way affect its
`
`designation as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’
`
`EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE.”
`
`Transcripts containing Protected Material shall have an obvious legend on the title
`
`page that the transcript contains Protected Material, and the title page shall be followed by a
`
`list of all pages (including line numbers as appropriate) that have been designated as
`
`Protected Material and the level of protection being asserted by the Designating Party. The
`
`Designating Party shall inform the Court reporter of these requirements. Any transcript that
`
`is prepared before the expiration of a 30-day period for designation shall be treated during
`
`that period as if it had been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’
`
`EYES ONLY” in its entirety unless otherwise agreed. After the expiration of that period,
`
`the transcript shall be treated only as actually designated.
`
`(c) for information produced in some form other than documentary and for any other
`
`tangible items, that the Producing Party affix in a prominent place on the exterior of the
`
`container or containers in which the information or item is stored the legend
`
`“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or
`
`“HIGHLY CONFIDENTIAL – SOURCE CODE”. If only a portion or portions of the
`
`information or item warrant protection, the Producing Party, to the extent practicable, shall
`
`identify the protected portion(s) and specify the level of protection being asserted.
`
`(d) for discovery responses (e.g., Interrogatory responses) a Designating Party shall
`
`clearly designate those responses containing “CONFIDENTIAL,” “HIGHLY
`
`8
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 10 of 66 PageID #: 1470
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
`
`SOURCE CODE.”
`
`5.3
`
`Inadvertent Failures to Designate. If timely corrected, an inadvertent failure
`
`to designate qualified information or items does not, standing alone, waive the Designating
`
`Party’s right to secure protection under this Order for such material. Upon timely correction
`
`of a designation, the Receiving Party must make reasonable efforts to assure that the
`
`material is treated in accordance with the provisions of this Order.
`
`6.
`
`CHALLENGING CONFIDENTIALITY DESIGNATIONS
`
`6.1
`
`Timing of Challenges. Any Party or Non-Party may challenge a designation
`
`of confidentiality at any time. Unless a prompt challenge to a Designating Party’s
`
`confidentiality designation is necessary to avoid foreseeable, substantial unfairness,
`
`unnecessary economic burdens, or a significant disruption or delay of the litigation, a Party
`
`does not waive its right to challenge a confidentiality designation by electing not to mount a
`
`challenge promptly after the original designation is disclosed.
`
`6.2 Meet and Confer. The Challenging Party shall initiate the dispute resolution
`
`process by providing written notice of each designation it is challenging and describing the
`
`basis for each challenge. To avoid ambiguity as to whether a challenge has been made, the
`
`written notice must recite that the challenge to confidentiality is being made in accordance
`
`with this specific paragraph of the Protective Order. The parties shall attempt to resolve
`
`each challenge in good faith and must begin the process by conferring directly (in voice to
`
`voice dialogue; other forms of communication are not sufficient) within 14 days of the date
`
`of service of notice. In conferring, the Challenging Party must explain the basis for its belief
`
`that the confidentiality designation was not proper and must give the Designating Party an
`
`9
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 11 of 66 PageID #: 1471
`
`opportunity to review the designated material, to reconsider the circumstances, and, if no
`
`change in designation is offered, to explain the basis for the chosen designation. A
`
`Challenging Party may proceed to the next stage of the challenge process only if it has
`
`engaged in this meet and confer process first or establishes that the Designating Party is
`
`unwilling to participate in the meet and confer process in a timely manner.
`
`6.3
`
`Judicial Intervention. If the Parties cannot resolve a challenge without court
`
`intervention, the Challenging Party may initiate the Paragraph 2.j. procedure for Discovery
`
`Matters (Scheduling Order D.I. 37 at 5–6) and will be the party seeking relief. The burden of
`
`persuasion in any such challenge proceeding shall be on the Designating Party. Frivolous
`
`challenges and those made for an improper purpose (e.g., to harass or impose unnecessary
`
`expenses and burdens on other parties) may expose the Challenging Party to sanctions. All
`
`parties shall continue to afford the material in question the level of protection to which it is
`
`entitled under the Producing Party’s designation until the Court rules on the challenge.
`
`7.
`
`ACCESS TO AND USE OF PROTECTED MATERIAL
`
`7.1
`
`Basic Principles. A Receiving Party may use Protected Material that is
`
`disclosed or produced by another Party or by a Non-Party in connection with this case only
`
`for prosecuting, defending, or attempting to settle this litigation. Such Protected Material
`
`may be disclosed only to the categories of persons and under the conditions described in this
`
`Order. When the litigation has been terminated, a Receiving Party must comply with the
`
`provisions of Section 14 below (FINAL DISPOSITION).
`
`10
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 12 of 66 PageID #: 1472
`
`Protected Material must be stored and maintained by a Receiving Party at a location
`
`and in a secure manner1 that ensures that access is limited to the persons authorized under
`
`this Order.
`
`7.2 Disclosure of “CONFIDENTIAL” Information or Items. Unless otherwise
`
`ordered by the Court or permitted in writing by the Designating Party, a Receiving Party
`
`may disclose any information or item designated “CONFIDENTIAL” only to:
`
`(a) the Receiving Party’s Outside Counsel of Record in this action, as well as
`
`employees of said Outside Counsel of Record to whom it is reasonably necessary to disclose
`
`the information for this litigation;
`
`(b) the officers, directors, and employees (including House Counsel) of the Receiving
`
`Party to whom disclosure is reasonably necessary for this litigation and who have signed the
`
`“Acknowledgment and Agreement to Be Bound” (Exhibit A);
`
`(c) Experts (as defined in this Order) of the Receiving Party to whom disclosure is
`
`reasonably necessary for this litigation and who have signed the “Acknowledgment and
`
`Agreement to Be Bound” (Exhibit A);
`
`(d) the Court and its personnel;
`
`(e) court reporters and their staff, professional jury or trial consultants,2 mock jurors
`
`and Professional Vendors to whom disclosure is reasonably necessary for this litigation and
`
`who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A);
`
`1 It may be appropriate under certain circumstances to require the Receiving Party to store any electronic Protected
`Material in password-protected form.
`
`2 The parties may wish to allow disclosure of information not only to professional jury or trial consultants, but also
`to mock jurors, to further trial preparation. In that situation, the parties may wish to draft a simplified, precisely
`tailored Undertaking for mock jurors to sign.
`
`11
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 13 of 66 PageID #: 1473
`
`(f) during their depositions, witnesses, and attorneys for witnesses, in the action to
`
`whom disclosure is reasonably necessary and who have signed the “Acknowledgment and
`
`Agreement to Be Bound” (Exhibit A), unless otherwise agreed by the Designating Party, or
`
`unless the document shows a witness is the recipient of the document, or ordered by the
`
`Court. Pages of transcribed deposition testimony or exhibits to depositions that reveal
`
`Protected Material must be separately bound by the Court reporter and may not be disclosed
`
`to anyone except as permitted under this Protective Order.
`
`(g) the author or recipient of a document containing the information or a custodian
`
`or other person who otherwise possessed or knew the information; and
`
`(h) any mediator or settlement officer, and their supporting personnel, mutually
`
`agreed upon by any of the parties engaged in settlement discussions, and who have signed
`
`the “Acknowledgment and Agreement to Be Bound” that is attached hereto as Exhibit A.
`
`7.3 Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
`
`ONLY” and “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items.
`
`Unless otherwise ordered by the Court or permitted in writing by the Designating Party, a
`
`Receiving Party may disclose any information or item designated “HIGHLY
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL –
`
`SOURCE CODE” only to:
`
`(a) the Receiving Party’s Outside Counsel of Record in this action, as well as
`
`employees of said Outside Counsel of Record to whom it is reasonably necessary to disclose
`
`the information;
`
` (b) Experts of the Receiving Party (1) to whom disclosure is reasonably necessary for
`
`this litigation, (2) who have signed the “Acknowledgment and Agreement to Be Bound”
`
`12
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 14 of 66 PageID #: 1474
`
`(Exhibit A), and (3) as to whom the procedures set forth in paragraph 7.4(a), below, have
`
`been followed;
`
`(c) the Court and its personnel;
`
`(d) court reporters and their staff, professional jury or trial consultants, mock jurors,
`
`and Professional Vendors to whom disclosure is reasonably necessary for this litigation and
`
`who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A); and
`
`(e) the author or recipient of a document containing the information or a custodian
`
`or other person who otherwise possessed or knew the information.
`
`
`
`7.4 Procedures for Approving or Objecting to Disclosure of “HIGHLY
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
`
`SOURCE CODE” Information or Items to Experts.
`
`(a) Unless otherwise ordered by the Court or agreed to in writing by the Designating
`
`Party, a Party that seeks to disclose to an Expert (as defined in this Order) any information
`
`or item designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
`
`“HIGHLY CONFIDENTIAL – SOURCE CODE” pursuant to paragraph 7.3(b) first must
`
`make a written request to the Designating Party that (1) identifies the general categories of
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY
`
`CONFIDENTIAL – SOURCE CODE” information that the Receiving Party seeks
`
`permission to disclose to the Expert, (2) sets forth the full name of the Expert and the city
`
`and state of his or her primary residence, (3) attaches a copy of the Expert’s current resume
`
`or curriculum vitae, (4) identifies the Expert’s current employer(s), (5) identifies each person
`
`or entity from whom the Expert has received compensation or funding for work in his or her
`
`areas of expertise or to whom the expert has provided professional services, including in
`
`13
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 15 of 66 PageID #: 1475
`
`connection with a litigation, at any time during the preceding five years,3 (6) identifies (by
`
`name and number of the case, filing date, and location of court) any litigation in connection
`
`with which the Expert has offered expert testimony, including through a declaration, report,
`
`or testimony at a deposition or trial, during the preceding five years, and (7) identifies all
`
`patents and pending patent applications by the Expert. If the Expert files any patent
`
`application during this litigation, the Party disclosing the Expert must disclose it within two
`
`weeks of learning of its filing.
`
`(b) A Party that makes a request and provides the information specified in the
`
`preceding respective paragraphs may disclose the subject Protected Material to the identified
`
`Expert unless, within 14 days of delivering the request, the Party receives a written objection
`
`from the Designating Party. Any such objection must set forth in detail the grounds on
`
`which it is based.
`
`(c) A Party that receives a timely written objection must meet and confer with the
`
`Designating Party (through direct voice to voice dialogue) to try to resolve the matter by
`
`agreement within seven days of the written objection. If no agreement is reached, the Party
`
`seeking to make the disclosure to the Expert may file a motion seeking permission from the
`
`Court to do so. Any such motion must describe the circumstances with specificity, set forth
`
`in detail the reasons why the disclosure to the Expert is reasonably necessary, assess the risk
`
`of harm that the disclosure would entail, and suggest any additional means that could be
`
`used to reduce that risk. In addition, any such motion must be accompanied by a competent
`
`3 If the Expert believes any of this information is subject to a confidentiality obligation to a third-party, then the
`Expert should provide whatever information the Expert believes can be disclosed without violating any
`confidentiality agreements, and the Party seeking to disclose to the Expert shall be available to meet and confer with
`the Designating Party regarding any such engagement.
`
`14
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 16 of 66 PageID #: 1476
`
`declaration describing the parties’ efforts to resolve the matter by agreement (i.e., the extent
`
`and the content of the meet and confer discussions) and setting forth the reasons advanced
`
`by the Designating Party for its refusal to approve the disclosure. In any such proceeding,
`
`the Party opposing disclosure to the Expert shall bear the burden of proving that the risk of
`
`harm that the disclosure would entail (under the safeguards proposed) outweighs the
`
`Receiving Party’s need to disclose the Protected Material to its Expert.
`
`7.5
`
`PROSECUTION BAR
`
`Absent written consent from the Producing Party, any of Plaintiff’s Outside Counsel,
`
`experts, officers, directors, or employees (including House Counsel) who receive access to
`
`“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL
`
`– SOURCE CODE” information shall not be involved in the prosecution of patents or patent
`
`applications relating to backside-illumination (“BSI”) image sensors, including without
`
`limitation the patents asserted in this action and any patent or application claiming priority to or
`
`otherwise related to the patents asserted in this action, before any foreign or domestic agency,
`
`including the United States Patent and Trademark Office (“the Patent Office”). For purposes of
`
`this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or
`
`otherwise affecting the scope or maintenance of patent claims. To avoid any doubt, these
`
`prohibitions are not intended to and shall not preclude any Party’s Outside Counsel of Record
`
`from participating in or advising on any reexamination, inter partes review, or post-grant review
`
`with respect to any patents in which any Party or its Affiliates have any interest. This
`
`Prosecution Bar shall begin when access to “HIGHLY CONFIDENTIAL – ATTORNEYS’
`
`EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” information is first received
`
`by the affected individual and shall end two (2) years after final termination of this action.
`
`15
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 17 of 66 PageID #: 1477
`
`8.
`
`SOURCE CODE
`
`(a)
`
`To the extent production of source code becomes necessary in this case, a
`
`Producing Party may designate source code as “HIGHLY CONFIDENTIAL - SOURCE
`
`CODE” if it comprises or includes confidential, proprietary or trade secret source code.
`
`(b)
`
`Protected Material designated as “HIGHLY CONFIDENTIAL – SOURCE
`
`CODE” shall be subject to all of the protections afforded to “HIGHLY CONFIDENTIAL
`
`– ATTORNEYS’ EYES ONLY” information, including the Prosecution Bar set forth in
`
`Paragraph 7.5, and may be disclosed only to the individuals to whom “HIGHLY
`
`CONFIDENTIAL – ATTORNEYS’EYES ONLY” information may be disclosed, as set
`
`forth in Paragraphs 7.3 and 7.4
`
`(c)
`
`Any source code produced in discovery shall be made available for
`
`inspection, in its native format (e.g., GDS files) so that can be reasonably reviewed and
`
`searched, during normal business hours or at other mutually agreeable times, at an office of
`
`the Producing Party’s counsel or another mutually agreed upon location. Computer source
`
`code (such as, but not limited to Java and C++ code) will be made available for inspection
`
`in its native format. The source code shall be made available for inspection on a secured
`
`computer in a secured room without Internet access or network access to other computers,
`
`and the Receiving Party shall not copy, remove, or otherwise transfer any portion of the
`
`source code onto any recordable media or recordable device. No electronic devices,
`
`including but not limited to, laptops, USB drives, floppy drives, cellular telephones,
`
`cameras, personal digital assistants, and voice recorders, are permitted in the secured room.
`
`The Receiving Party may take notes during inspection, but may not copy the source code
`
`into the notes. The Producing Party shall install tools that are sufficient for viewing and
`
`16
`
`

`

`Case 1:16-cv-00290-MN Document 48-1 Filed 01/11/18 Page 18 of 66 PageID #: 1478
`
`searching the code produced, on the platform produced. The parties may further confer on
`
`installing additional tools for viewing and searching the code produced. The Receiving
`
`Party’s outside counsel and/or experts may also request that additional reasonable free,
`
`shareware, or commercially available4 software tools for viewing and searching Source
`
`Code be installed on the secured computer. The Producing Party may visually monitor the
`
`activities of the Receiving Party’s representatives during any source code review, but only to
`
`ensure that there is no unauthorized recording, copying, or transmission of the source code.
`
`(d) The Receiving Party shall provide at least seven (7) days’ notice to the
`
`Producing Party prior to any inspection of source code. The Receiving Party shall have a
`
`maximum of 80 hours over no more than 15 days, which do not have to be consecutive, to
`
`complete the review. No Source Code review shall occur after close of discovery unless by
`
`agreement of the Producing Party. No more than a total of 10 individuals identified by the
`
`Receiving Party shall have access to the secure room. Immediately prior to each grant of
`
`access to the secure room or the source code, each authorized person shall provide proper
`
`identification for the Producing Party or the Producing Party’s counsel to verify identity.
`
`Proper identification requires showing, at a minimum, a photo identification card
`
`sanctioned by the government of any State of the United States or by the nation state of the
`
`authorized person’s current citizenship. Access to the secure room or the source code may
`
`be denied, at the discretion of the Prod