Case 5:19-cv-00036-RWS Document 38-1 Filed 06/17/19 Page 1 of 40 PageID #: 424
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`
`
`Plaintiff,
`
`
`
`
`
`vs.
`
`APPLE INC.,
`
`
`
`
`
`Defendant.
`
` Civil Action No. 5:19-cv-00036-RWS
`
`
`JURY TRIAL DEMANDED
`
`
`
`AGREED PROTECTIVE ORDER
`REGARDING THE DISCLOSURE AND USE OF DISCOVERY MATERIALS
`
`
`Plaintiff Maxell, Ltd. (“Plaintiff”) and Defendant Apple Inc. (“Defendant”)
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`anticipate that documents, testimony, or information containing or reflecting confidential,
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`proprietary, trade secret, and/or commercially sensitive information are likely to be disclosed
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`or produced during the course of discovery, initial disclosures, and supplemental disclosures
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`in this case and request that the Court enter this Order setting forth the conditions for treating,
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`obtaining, and using such information.
`
`Pursuant to Rule 26(c) of the Federal Rules of Civil Procedure, the Court finds
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`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
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`be used by a Receiving Party solely for this case or any related appellate proceeding, and shall not
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`be used directly or indirectly for any other purpose whatsoever.
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`AGREED PROTECTIVE ORDER – PAGE 1
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`

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`(b)
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`The Parties acknowledge that this Order does not confer blanket protections
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`on all disclosures during discovery, or in the course of making initial or supplemental disclosures
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`under Rule 26(a). Designations under this Order shall be made with care and shall not be made
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`absent a good faith belief that the designated material satisfies the criteria set forth below. If it
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`comes to a Producing Party’s attention that designated material does not qualify for protection at
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`all, or does not qualify for the level of protection initially asserted, the Producing Party must
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`promptly notify all other Parties that it is withdrawing or changing the designation.
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`2.
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`DEFINITIONS
`
`(a)
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`“Discovery Material” means all items or information, including from any
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`non-party, regardless of the medium or manner generated, stored, or maintained (including, among
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`other things, testimony, transcripts, or tangible things) that are produced, disclosed, or generated
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`in connection with discovery or Rule 26(a) disclosures in this case.
`
`(b)
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`“Outside Counsel” means (i) outside counsel who appear on the pleadings
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`as counsel for a Party and (ii) partners, associates, and staff of such counsel to whom it is
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`reasonably necessary to disclose the information for this litigation.
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`(c)
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`For the purpose of this Protective Order only, “Patents-in-suit” means U.S.
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`Patent Nos. 6,748,317 (“the ’317 patent”); 6,580,999 (“the ’999 patent”); 8,339,493 (“the ’493
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`patent”); 7,116,438 (“the ’438 patent”); 6,408,193 (“the ’193 patent”); 10,084,991 (“the ’991
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`patent”); 6,928,306 (“the ’306 patent”); 6,329,794 (“the ’794 patent”); 10,212,586 (“the ’586
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`patent”); and 6,430,498 (“the ’498 patent”), and any other patent asserted in this action, as well as
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`any related patents, patent applications, provisional patent applications, continuations, and/or
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`divisionals.
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`AGREED PROTECTIVE ORDER – PAGE 2
`732788077.1
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`(d)
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` “Party” means any party to this case, including all of its officers, directors,
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`employees, consultants, retained experts, and outside counsel and their support staffs.
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`(e)
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`“Producing Party” means any Party or non-party that discloses or produces
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`any Discovery Material in this case.
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`(f)
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`“Receiving Party” means any Party who receives Discovery Material from
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`a Producing Party.
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`(g)
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`“Protected Material” means any Discovery Material that is designated as
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`“CONFIDENTIAL,” “CONFIDENTIAL - ATTORNEYS’ EYES ONLY,” or “CONFIDENTIAL
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`- OUTSIDE ATTORNEYS’ EYES ONLY - SOURCE CODE,” as provided for in this Order.
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`Protected Material shall not include: (i) advertising materials that have been actually published or
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`publicly disseminated; and (ii) materials that show on their face they have been disseminated to
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`the public.
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`(h)
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`“Source Code” means computer code, scripts, assembly, binaries, object
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`code, source code listings and descriptions of source code, object code listings and descriptions of
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`object code, Hardware Description Language (HDL) or Register Transfer Level (RTL) files that
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`describe the hardware design of any ASIC or other chip, and Computer Aided Design (CAD) files
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`that describe the hardware design of any component.
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`3.
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`
`
`
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`COMPUTATION OF TIME
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`The computation of any period of time prescribed or allowed by this Order shall
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`be governed by the provisions for computing time set forth in Federal Rules of Civil
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`Procedure 6.
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`AGREED PROTECTIVE ORDER – PAGE 3
`732788077.1
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`

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`4.
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`SCOPE
`
`(a)
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`The protections conferred by this Order cover not only Discovery Material
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`governed by this Order as addressed herein, but also any information copied or extracted
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`therefrom, as well as all copies, excerpts, summaries, or compilations thereof, plus testimony,
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`conversations, or presentations by Parties or their counsel in court or in other settings that might
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`reveal Protected Material.
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`(b)
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`Nothing in this Protective Order shall prevent or restrict a Producing Party’s
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`own disclosure or use of its own Protected Material for any purpose.
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`(c)
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`Notwithstanding the provisions of this Order, any Producing Party may
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`provide written consent permitting any Receiving Party to use the Producing Party’s Protected
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`Material in court or in any court filing.
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`(d)
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`This Order is without prejudice to the right of any Party to seek further or
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`additional protection of any Discovery Material or to modify this Order in any way, including,
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`without limitation, an order that certain matter not be produced at all.
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`5.
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`
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`DURATION
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`Even after the termination of this case, the confidentiality obligations imposed by
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`this Order shall remain in effect until a Producing Party agrees otherwise in writing or a court order
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`otherwise directs.
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`6.
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`ACCESS TO AND USE OF PROTECTED MATERIAL
`
`(a)
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` Basic Principles. All Protected Material shall be used solely for this case
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`or any related appellate proceeding, and not for any other purpose whatsoever, including without
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`limitation any other litigation, patent prosecution or acquisition, patent reexamination or reissue
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`AGREED PROTECTIVE ORDER – PAGE 4
`732788077.1
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`

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`proceedings, or any business or competitive purpose or function. Protected Material shall not be
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`distributed, disclosed or made available to anyone except as expressly provided in this Order.
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`(b)
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`Patent Prosecution Bar. Absent the written consent of the Producing Party,
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`any person who receives one or more items designated “CONFIDENTIAL – ATTORNEYS’
`
`EYES ONLY” or “CONFIDENTIAL – ATTORNEYS’ EYES ONLY – SOURCE CODE” shall
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`not be involved, directly or indirectly, in any of the following activities: (i) advising on, consulting
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`on, preparing, prosecuting, drafting, editing, and/or amending of patent applications,
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`specifications, claims, and/or responses to office actions, or otherwise affecting the scope of claims
`
`in patents or patent applications relating to the functionality, operation, and design of the
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`technology pertaining to the subject matter of the Patents-in-suit, including but not limited to
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`(a) providing navigation information for a portable terminal and allowing users of a portable
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`terminal to share location information; (b) operating in different camera modes for capturing still
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`images and video images by mixing or culling pixels; (c) providing an information processing
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`device that uses a short-distance communication unit to perform an authentication process to allow
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`a second communication unit to communicate with a display apparatus; (d) performing
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`transmission power control in a CDMA system by controlling the amplifiers; (e) providing an
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`information processing device that manages display/processing of content while providing video
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`telephone functionality; (f) alerting a mobile device’s user of an incoming signal by generating
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`ringing sounds; (g) controlling power consumption in an information processing device based on
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`priority of functions in the device; or (h) a wireless unlocking system for a mobile device using a
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`separate registered mobile device, before any foreign or domestic agency, including the United
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`States Patent and Trademark Office; and (ii) the acquisition of patents (including patent
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`applications), or the rights to any such patents or patent applications with the right to sublicense,
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`AGREED PROTECTIVE ORDER – PAGE 5
`732788077.1
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`(a) providing navigation information for a portable terminal and allowing users of a portable
`
`terminal to share location information; (b) operating in different camera modes for capturing still
`
`images and video images by mixing or culling pixels; (c) providing an information processing
`
`device that uses a short-distance communication unit to perform an authentication process to allow
`
`a second communication unit to communicate with a display apparatus; (d) performing
`
`transmission power control in a CDMA system by controlling the amplifiers; (e) providing an
`
`information processing device that manages display/processing of content while providing video
`
`telephone functionality; (f) alerting a mobile device’s user of an incoming signal by generating
`
`ringing sounds; (g) controlling power consumption in an information processing device based on
`
`priority of functions in the device; or (h) a wireless unlocking system for a mobile device using a
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`separate registered mobile device. For sake of clarity, any attorney representing a Party, whether
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`in-house or outside counsel, and any person associated with a Party and permitted to receive
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`another Party’s Protected Material, may participate, supervise and assist in any and all proceedings
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`before the U.S. Patent and Trademark Office related to the Party’s Patents-in-suit, including
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`without limitation Inter Partes Review (IPR) proceedings, even if they have received the other
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`Party’s Protected Material, provided that they do not participate or assist in any claim drafting or
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`amendment of claims in such proceedings. These prohibitions shall begin when access to
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`“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “CONFIDENTIAL – ATTORNEYS’
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`EYES ONLY – SOURCE CODE” materials are first received by the affected individual, and shall
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`end two (2) years after the final resolution of this action, including all appeals.
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`(c)
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`Secure Storage, No Export. Protected Material must be stored and
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`maintained by a Receiving Party at a location in the United States and in a secure manner that
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`ensures that access is limited to the persons authorized under this Order. [Plaintiff proposal: The
`
`AGREED PROTECTIVE ORDER – PAGE 6
`732788077.1
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`Parties agree to comply with applicable United States Export Administration Regulations to the
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`extent pertaining to Protected Material.]1 [Defendant proposal: To ensure compliance with
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`applicable United States Export Administration Regulations, Protected Material may not be
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`exported outside the United States or released to any foreign national (even if within the United
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`States) without the express written consent of the Producing Party. Should the need arise for a
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`Receiving Party to provide certain categories of Protected Material (e.g., non-technical documents)
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`to foreign nationals or persons outside the United States, the Parties agree to meet and confer in
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`good faith to discuss accommodations for such requests.]2
`
`
`1 The language highlighted in green is proposed by Maxell and disputed by Apple. Apple’s
`proposed language is unnecessary and unduly restrictive because it (i) applies to all Protected
`Material regardless of whether such material falls within the scope of the United States Export
`Administration Regulations, (ii) conflicts with paragraph 8(b)(ii) because all such Maxell
`personnel are foreign nationals, and (iii) is outside the scope and purpose of this Protective
`Order. As an alternative, Maxell has provided this counter proposal. Excluding Apple’s proposal,
`or including Maxell’s proposed language as an alternative, does not enable violation of the US
`Expert Regulations, which are in place whether noted in this Order or not. Those protections
`exist for Apple regardless. Moreover, Apple’s proposal adds extremely burdensome procedures
`for the many confidential documents that are not subject to expert regulations, including virtually
`all information related to sales, marketing, customer research, licensing, and more.
`2 The language highlighted in blue is proposed by Apple and disputed by Maxell. Apple proposes
`that Protected Material remain inside the United States, unless otherwise agreed by the
`Producing Party, to (1) reduce the risk associated with transporting Protected Material to foreign
`jurisdictions; and (2) ensure compliance with export control laws. The Protective Order does not
`(and cannot) grant any Federal Court personal jurisdiction over persons located in foreign
`countries necessary to enforce the Protective Order. See e.g., WesternGeco LLC v. Ion
`Geophysical Corp., 776 F. Supp. 2d 342, 367 n.17 (S.D. Tex. Mar. 2, 2011) (“Although a state
`may, in limited circumstances, extend its jurisdiction beyond the territorial limits of its
`sovereignty, any such extension is ‘subject to the consent of other nations.’”) (citations
`omitted). In addition, non-public information produced in this litigation, including proprietary
`source code, is likely to be subject to export control designations, including for example Export
`Control Classification Numbers 5D002, 5E002, 5D992, 5E992, and EAR99. For these reasons,
`it is entirely appropriate and reasonable to ensure that Protected Material remains inside the
`United States and not shared with foreign nationals, unless otherwise agreed by the
`Parties. Courts in this District and others have approved similar provisions. See, e.g., Uniloc
`USA, et al. v. Samsung Electronics America, Inc., et al., No. 2:18-cv-00040-JRG-RSP (Docket
`No. 38) (May 30, 2018) (entering a provision under which protected material “shall not be taken
`or reviewed outside the United States unless expressly agreed to in writing by the Producing
`AGREED PROTECTIVE ORDER – PAGE 7
`732788077.1
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`(d)
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`Legal Advice Based on Protected Material. Nothing in this Protective Order
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`shall be construed to prevent counsel from advising their clients with respect to this case based in
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`whole or in part upon Protected Materials, provided counsel does not disclose the Protected
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`Material itself except as provided in this Order.
`
`(e)
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`Limitations. Nothing in this Order shall restrict in any way a Producing
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`Party’s use or disclosure of its own Protected Material. Nothing in this Order shall restrict in any
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`way the use or disclosure of Discovery Material by a Receiving Party: (i) that is or has become
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`publicly known through no fault of the Receiving Party; (ii) that is lawfully acquired by or known
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`to the Receiving Party independent of the Producing Party; (iii) previously produced, disclosed
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`and/or provided by the Producing Party to the Receiving Party or a non-party without an
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`obligation of confidentiality and not by inadvertence or mistake; (iv) with the consent of the
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`Producing Party; or (v) pursuant to order of the Court.
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`7.
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`DESIGNATING PROTECTED MATERIAL
`
`(a)
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`Available Designations. Any Producing Party may designate Discovery
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`Material with any of the following designations, provided that it meets the requirements for such
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`designations as provided for herein: “CONFIDENTIAL,” “CONFIDENTIAL - ATTORNEYS’
`
`EYES ONLY,” or “CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY - SOURCE
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`CODE.”
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`(b) Written Discovery and Documents and Tangible Things. Written
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`discovery, documents (which include “electronically stored information,” as that phrase is used in
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`Federal Rule of Civil Procedure 34), and tangible things that meet the requirements for the
`
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`Party”); ContentGuard Holdings, Inc. v. Amazon.com, Inc. et al., Case No. 2:13-cv-01112-JRG
`(Docket No. 151) (June 6, 2014)(entering a strict prohibition on transporting Protected Material
`to foreign jurisdictions).
`AGREED PROTECTIVE ORDER – PAGE 8
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`confidentiality designations listed in Paragraph 7(a) may be so designated by placing the
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`appropriate designation on every page of the written material prior to production. For digital files
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`being produced, the Producing Party may mark each viewable page or image with the appropriate
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`designation, and mark the medium, container, and/or communication in which the digital files were
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`contained. In the event that original documents are produced for inspection, the original
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`documents shall be presumed “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” during the
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`inspection and re-designated, as appropriate during the copying process.
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`(c)
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`Native Files. Where electronic files and documents are produced in native
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`electronic format, such electronic files and documents shall be designated for protection under this
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`Order by appending to the file names or designators information indicating whether the file
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`contains “CONFIDENTIAL,” “CONFIDENTIAL - ATTORNEYS’ EYES ONLY,” or
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`“CONFIDENTIAL - OUTSIDE ATTORNEYS’ EYES ONLY - SOURCE CODE,” material, or
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`shall use any other reasonable method for so designating Protected Materials produced in
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`electronic format. When electronic files or documents are printed for use at deposition, in a court
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`proceeding, or for provision in printed form to an expert or consultant pre-approved pursuant to
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`Paragraph 12, the party printing the electronic files or documents shall affix a legend to the printed
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`document corresponding to the designation of the Designating Party and including the production
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`number and designation associated with the native file. [Defendant proposal: No one shall seek to
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`use in this litigation a .tiff, .pdf or other image format version of a document produced in native
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`file format without first providing a representation from Outside Counsel that the image format
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`version accurately represents the natively-produced document and no information has been altered
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`in creating the image format version. If it is determined that the image file format version does
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`not accurately represent the natively-produced document or that information in the natively-
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`AGREED PROTECTIVE ORDER – PAGE 9
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`produced document was altered in creating the image format version, the party that sought to use
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`or used the image format version shall be required to remove and destroy all copies of such image
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`format version.]3, 4
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`(d)
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`Depositions and Testimony.
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`(i)
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`Parties or testifying persons or entities may designate depositions
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`and other testimony with the appropriate designation by indicating on the record at the time the
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`testimony is given or by sending written notice of how portions of the transcript of the testimony is
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`designated within thirty (30) days of receipt of the transcript of the testimony. If no indication on
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`the record is made, all information disclosed during a deposition shall be deemed
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`“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” until the time within which it may be
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`appropriately designated as provided for herein has passed. Any Party that wishes to disclose the
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`transcript, or information contained therein, may provide written notice of its intent to treat the
`
`
`3 The language highlighted in blue is proposed by Apple and disputed by Maxell. Printing native
`files to PDF can sometimes alter or destroy altogether the integrity of the information contained
`therein. For example, large and complex Excel spreadsheets frequently have hidden columns or
`data stored in pivot tables and other data that are not amenable to printing to PDF form. Without
`the provision proposed by Apple, for example, if Maxell uses at a deposition a PDF printout of a
`file that was produced in native format, the witness and Apple’s counsel will have to take time—
`on the record—to ensure that there are no discrepancies between the PDF version and the native
`version before the witness can answer questions about the document. To avoid this unnecessary
`waste of time and resources, Apple proposes that any party using a PDF version of a natively-
`produced file make a representation about the accuracy of the document before using it. And if
`the PDF is nonetheless inaccurate, even inadvertently so, Apple proposes a reasonable remedy to
`prevent the inaccurate printouts from propagating throughout the litigation and into trial.
`4 Apple’s proposed language is unnecessary and unduly burdensome. First, creating a new
`document out of an old one—for example, by printing it or creating an annotated version—does
`nothing to the original document. It does not alter, destroy, or in any way change the original
`document, which remains as it was. Second, Apple’s proposed language effectively restricts the
`use of such native files to unaltered versions of the document, when marking up and altering
`documents is common place and promotes efficiency. Third, Apple has sufficient other means to
`address such matters that would not unduly burden Maxell’s ability to litigate its case—including
`at least cross-examination, deposition, expert discovery, and written discovery.
`AGREED PROTECTIVE ORDER – PAGE 10
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`transcript as non-confidential, after which time, any Party that wants to maintain any portion of
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`the transcript as confidential must designate the confidential portions within fourteen (14) days, or
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`else the transcript may be treated as non-confidential. Any Protected Material that is used in the
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`taking of a deposition shall remain subject to the provisions of this Protective Order, along with the
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`transcript pages of the deposition testimony dealing with such Protected Material. In such cases
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`the court reporter shall be informed of this Protective Order and shall be required to operate in a
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`manner consistent with this Protective Order. In the event the deposition is videotaped, the original
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`and all copies of the videotape shall be marked by the video technician to indicate that the contents
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`of the videotape are subject to this Protective Order, substantially along the lines of “This videotape
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`contains confidential testimony used in this case and is not to be viewed or the contents thereof
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`to be displayed or revealed except pursuant to the terms of the operative Protective Order in
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`this matter or pursuant to written stipulation of the parties.”
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`(ii)
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`Nothing contained herein shall be construed to prejudice any Party’s
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`right to use any Protected Material in taking testimony at any deposition or hearing provided that
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`the Protected Material is only disclosed to a person(s) who is: (i) identified in the Protected
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`Material as an author, addressee, or copy recipient of such information; (ii) although not identified
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`as an author, addressee, or copy recipient of such Protected Material, is shown through
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`foundational testimony to have received such Protected Material; or (iii) is entitled hereunder to
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`access to Protected Material. Protected Material shall not be disclosed to any other persons unless
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`prior authorization is obtained from counsel representing the Producing Party or from the Court.
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`Counsel for any Producing Party shall have the right to exclude from oral depositions, other
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`than the deponent, deponent’s counsel, the reporter and videographer (if any), and the
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`translator (if any), any person who is not authorized by this Protective Order to receive or
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`AGREED PROTECTIVE ORDER – PAGE 11
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`access Protected Material based on the designation of such Protected Material. Such right of
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`exclusion shall be applicable only during periods of examination or testimony regarding such
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`Protected Material.
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`8.
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`DISCOVERY MATERIAL DESIGNATED AS “CONFIDENTIAL”
`
`(a)
`
`A Producing Party may
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`designate Discovery Material
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`as
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`“CONFIDENTIAL” if it contains or reflects confidential, proprietary, and/or commercially
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`sensitive information.
`
`(b)
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`Unless otherwise ordered by the Court, Discovery Material designated as
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`“CONFIDENTIAL” may be disclosed only to the following:
`
`(i)
`
`The Receiving Party’s Outside Counsel, such counsel’s immediate
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`paralegals and staff, and any copying or clerical litigation support services working at the direction
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`of such counsel, paralegals, and staff;
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`(ii)
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`Not more than three (3) representatives of the Receiving Party who
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`are officers or employees of the Receiving Party, who may be, but need not be, in-house counsel
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`for the Receiving Party, as well as their immediate paralegals and staff, to whom disclosure is
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`reasonably necessary for this case, provided that: (a) each such person has agreed to be bound by
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`the provisions of the Protective Order by signing a copy of Exhibit A; and (b) no unresolved
`
`objections to such disclosure exist after proper notice has been given to all Parties as set forth
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`in Paragraph 12 below;
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`(iii) Any outside expert or consultant retained by the Receiving Party to
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`assist in this action, provided that disclosure is only to the extent necessary to perform such work;
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`and provided that: (a) such expert or consultant has agreed to be bound by the provisions of the
`
`Protective Order by signing a copy of Exhibit A; (b) such expert or consultant is not a current
`
`AGREED PROTECTIVE ORDER – PAGE 12
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`officer, director, or employee of a Party or of a competitor of a Party, nor anticipated at the time
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`of retention to become an officer, director or employee of a Party or of a competitor of a Party; (c)
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`such expert or consultant accesses the materials in the United States only, and does not transport
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`them to or access them from any foreign jurisdiction; and (d) no unresolved objections to such
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`disclosure exist after proper notice has been given to all Parties as set forth in Paragraph 12 below;
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`(iv) Court reporters, stenographers and videographers retained to record
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`testimony taken in this action;
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`(v)
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`The Court, jury, and court personnel;
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`(vi) Graphics, translation, design, and/or trial consulting personnel,
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`having first agreed to be bound by the provisions of the Protective Order by signing a copy of
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`Exhibit A;
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`(vii) Mock jurors who have signed an undertaking or agreement agreeing
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`not to publicly disclose Protected Material and to keep any information concerning Protected
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`Material confidential;
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`(viii) Any mediator who is assigned to hear this matter, and his or her
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`staff, subject to their agreement to maintain confidentiality to the same degree as required by this
`
`Protective Order; and
`
`(ix) Any other person with the prior written consent of the Producing
`
`Party.
`
`
`
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`9.
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`DISCOVERY MATERIAL DESIGNATED AS “CONFIDENTIAL –
`ATTORNEYS’ EYES ONLY”
`
`(a)
`
`A Producing Party may
`
`designate Discovery Material
`
`as
`
`“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” if it contains or reflects information that is
`
`extremely confidential and/or sensitive in nature and the Producing Party reasonably believes that
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`AGREED PROTECTIVE ORDER – PAGE 13
`732788077.1
`
`

`

`Case 5:19-cv-00036-RWS Document 38-1 Filed 06/17/19 Page 14 of 40 PageID #: 437
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`the disclosure of such Discovery Material is likely to cause economic harm or significant
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`competitive disadvantage to the Producing Party. The Parties agree that the following information,
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`if non-public, shall be presumed to merit the “CONFIDENTIAL – ATTORNEYS’ EYES ONLY”
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`designation: trade secrets, pricing information, financial data, sales information, sales or
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`marketing forecasts or plans, business plans, sales or marketing strategy, product development
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`information, engineering documents, testing documents, employee information, and other non-
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`public information of similar competitive and business sensitivity. For sake of clarity, this
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`presumption does not relieve a Producing Party of its obligation to designate such material
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`“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” in order to receive the protections granted
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`by this Order, subject to the provisions of Paragraph 17.
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`(b)
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`Unless otherwise ordered by the Court, Discovery Material designated as
`
`“CONFIDENTIAL – ATTORNEYS’ EYES ONLY” may be disclosed only to:
`
`(i)
`
`The Receiving Party’s Outside Counsel, provided that such Outside
`
`Counsel is not involved in competitive decision-making, as defined by U.S. Steel v. United States,
`
`730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), on behalf of a Party or a competitor of a Party, and such
`
`Outside Counsel’s immediate paralegals and staff, and any copying or clerical litigation support
`
`services working at the direction of such counsel, paralegals, and staff;
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`(ii) Any outside expert or consultant retained by the Receiving Party to
`
`assist in this action, provided that disclosure is only to the extent necessary to perform such work;
`
`and provided that: (a) such expert or consultant has agreed to be bound by the provisions of the
`
`Protective Order by signing a copy of Exhibit A; (b) such expert or consultant is not a current
`
`officer, director, or employee of a Party or of a competitor of a Party, nor anticipated at the time
`
`of retention to become an officer, director, or employee of a Party or of a competitor of a Party;
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`AGREED PROTECTIVE ORDER – PAGE 14
`732788077.1
`
`

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`Case 5:19-cv-00036-RWS Document 38-1 Filed 06/17/19 Page 15 of 40 PageID #: 438
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`(c) such expert or consultant is not involved in competitive decision-making, as defined by U.S.
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`Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), on behalf of a Party or a
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`competitor of a Party; (d) such expert or consultant accesses the materials in the United States
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`only, and does not transport them to or access them from any foreign jurisdiction; and (e) no
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`unresolved objections to such disclosure exist after proper notice has been given to all Parties as
`
`set forth in Paragraph 12 below;
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`(iii) Court reporters, stenographers and videographers retained to record
`
`testimony taken in this action;
`
`(iv)
`
`The Court, jury, and court personnel;
`
`(v)
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`Graphics, translation, design, and/or trial consulting personnel,
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`having first agreed to be bound by the provisions of the Protective Order by signing a copy of
`
`Exhibit A;
`
`(vi)
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`In addition, a Party may disclose arguments and materials derived
`
`from Discovery Material designated as “CONFIDENTIAL – ATTORNEYS’ EYES ONLY” to
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`mock jurors who have first agreed to be bound by the provisions of the Protective Order by
`
`signing a copy of Exhibit A. A Party may not disclose to mock jurors any original, as-produced
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`materials or information (including, for example, documents, deposition testimony, or
`
`interrogatory responses) produced by another Party designated as “CONFIDENTIAL -
`
`ATTORNEYS’ EYES ONLY;”
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`(vii) Any shadow jurors (used solely during trial) who first agreed to be
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`bound by the provisions of the Protective Order by signing a copy of Exhibit A and provided that
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`AGREED PROTECTIVE ORDER – PAGE 15
`7