Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 1 of 9 PageID #: 31971
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Case No. 5:19-cv-0036-RWS
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`JURY TRIAL DEMANDED
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`§§
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`MAXELL, LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`SECOND ADDENDUM TO PROTECTIVE ORDERS
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` Plaintiff Maxell, Ltd. and Defendant Apple Inc. hereafter referred to as “the Parties,”
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`have worked together to allow for certain confidential documents produced in this case to be
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`used in the German Proceedings between Maxell and Apple. The Court entered an Agreed
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`Protective Order on July 2, 2019 (“the Original Protective Order”) (Docket No. 45), a Joint
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`Supplemental Protective Order between Intel, Plaintiff, and Defendant on October 28, 2019
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`(Docket No. 112), and a COVID-19 Addendum to the Protective Order on June 25, 2020
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`(Docket No. 353) (collectively with this Second Addendum, “the Protective Orders”). The
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`parties now have filed a motion for entry of an agreed Second Addendum (Docket No. 620). The
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`Court GRANTS the motion. It is hereby stipulated among the Parties and ORDERED that:
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`1.
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`This Second Addendum to the Protective Orders shall be effective immediately
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`upon entry. Except as modified herein, all other provisions of the Protective Orders shall remain
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`in full force and effect.
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 2 of 9 PageID #: 31972
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`2.
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`Defined terms in this Second Addendum have the meaning established in the
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`Protective Orders entered in this action unless otherwise modified pursuant to this Second
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`Addendum. In addition, pursuant to the provisions of this Second Addendum, “German
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`Proceedings” means the proceedings pending between the Parties in the District Court of
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`Düsseldorf, Civil Chamber 4c, styled: In the matter of Maxell Ltd., 4c O 14/20 (EP 1 286 174 B1);
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`In the matter of Maxell Ltd., 4c O 11/20 (EP 2 061 230); In the matter of Maxell Ltd., 4c O 12/20
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`(EP 2 403 266 B1); In the matter of Maxell Ltd., 4c O 10/20 (EP 1 482 508 B1); In the matter of
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`Maxell Ltd., 4c O 15/20 (EP 2 579 587 B1); In the matter of Maxell Ltd., 4c O 13/20 (EP 1 936
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`974 B1); and In the matter of Maxell Ltd., 4c O 45/19 (EP 1 324 539 B1); and “Court” means this
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`Court and the District Court of Düsseldorf.
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`3.
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`Notwithstanding anything to the contrary, the following paragraphs shall be
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`appended to Paragraph 1 of the Original Protective Order, amending it as follows:
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`1(c) Export Documents. Not more than 25 documents (collectively, “Export
`Documents”)1 consisting of non-Source Code Protected Material (i.e. Protected
`Material which is not “Source Code,” not designated “CONFIDENTIAL -
`OUTSIDE ATTORNEYS’ EYES ONLY - SOURCE CODE” or not designated
`“INTEL CONFIDENTIAL - ATTORNEYS’ EYES’ ONLY SOURCE CODE”)
`may be transmitted to Maxell’s German Counsel, subject to the remaining
`provisions of the Protective Orders, including without new Paragraphs 1(d)
`(governing dispute resolution) and 10 (governing secure means of transmission).
`Aside from the foregoing, the Export Documents shall not be used directly or
`indirectly for any other purpose whatsoever.
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`1(d) Export Document Designation Process. Apple shall have three (3) days
`from the date on which the Export Documents are identified to object to their
`transmission, including on the basis that such transmission would be unlawful
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`1 For the avoidance of doubt, “Export Documents” encompasses both the documents themselves
`and the information contained therein, such that a limitation on disclosure of the Export Documents
`themselves also limits disclosure of any part of their contents.
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`Page 2 of 6
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 3 of 9 PageID #: 31973
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`under federal export control law.2 Within two (2) days of receipt of the objection
`from Apple, the Parties shall meet-and-confer in good faith to resolve such
`objections. Absent agreement, Apple may file a motion for a protective order with
`this Court within three (3) days of the meet-and-confer.3 Export Documents shall
`not be transmitted unless and until the Court denies such a motion or Apple
`withdraws its objections.
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`1(e) Pre-conditions of Transmission of Export Documents. Subject to the
`remaining provisions of the Protective Orders, Maxell may transmit an encrypted
`or otherwise password-protected copy of the Export Documents to Maxell’s
`German Counsel. Five business days prior to the transmission of any Export
`Documents, each of Maxell’s German Counsel who may have any access to the
`Export Documents shall execute and serve on Apple a copy of the Confidentiality
`Agreement attached to this Order as Exhibit A.4 Maxell shall also execute and serve
`on Apple a copy of the Access Waiver attached to this Order as Exhibit B. The
`terms of Exhibit A and B are incorporated into the Protective Orders, and the terms
`of executed copies of Exhibit A or Exhibit B shall be enforceable as orders of this
`Court.
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`4.
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`The following paragraph shall be appended to Paragraph 2 of the Original
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`Protective Order, amending it as follows:
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`“Maxell’s German Counsel” is limited to (i) outside counsel who appear on
`2(c)
`the pleadings as counsel for Maxell in the German Proceedings and (ii) outside
`counsel who are partners, associates, and staff of the counsel in 2(c)(i), to whom it
`is reasonably necessary to disclose the information for this litigation. Counsel who
`appear as Maxell’s German Counsel after the transmission of the Export
`Documents may not receive any access to the Export Documents unless they
`comply with the provisions of the Protective Orders.
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`5.
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`Paragraph 6(a) of the Original Protective Order shall be amended as follows:
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`Basic Principles. All Protected Material shall be used solely for this case
`(a)
`or any related appellate proceeding. Notwithstanding that, Export Documents may
`also be used as confidential submissions in the German Proceedings. Aside from
`the foregoing, the Export Documents shall not be used directly or indirectly for any
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`2 To the extent Apple’s object is based on federal export control law, Apple shall provide the
`applicable Export Control Classification Number (“ECCN”) and any other information relevant
`to its determination that an export is prohibited.
`3 The Parties agree that briefing would conclude with Maxell’s Opposition, if any. No party shall
`submit a Reply or Sur-Reply.
`4 Counsel who appear as Maxell’s German Counsel after the transmission of the Export
`Documents may not receive any access to the Export Documents until they execute and serve upon
`Apple such Confidentiality Agreement.
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`Page 3 of 6
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 4 of 9 PageID #: 31974
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`other purpose whatsoever, including without limitation any other litigation, patent
`prosecution or acquisition, patent reexamination or reissue proceedings, or any
`business or competitive purpose or function. Export Documents shall not be
`distributed, disclosed, or made available to anyone except as expressly provided in
`the Protective Orders.
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`6.
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`Paragraph 6(c) of the Original Protective Order shall be amended as follows:
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`Secure Storage, No Export. Protected Material must be stored and
`(c)
`maintained by a Receiving Party at a location in the United States or Germany and
`in a secure manner that ensures that access is limited to the persons authorized
`under this Order. Certain Protected Material may be subject to laws and regulations
`relating to the export of technical data contained therein, including the release of
`such technical data to foreign persons or nationals in the United States or elsewhere.
`See, e.g., 15 CFR 734.2. The Producing Party shall identify material that may be
`subject to export control regulations (“Export Control Material”), as described in
`15 CFR 734.2 and the Commerce Control List. Subject to any exceptions under the
`law, no Export Control Material may leave the territorial boundaries of the United
`States of America or be made available to any foreign national who is not (i)
`lawfully admitted for permanent residence in the United States or (ii) identified as
`a protected individual under the Immigration and Naturalization Act (8 U.S.C.
`1324b(a)(3)). Without limitation, this prohibition extends to Export Control
`Material (including copies) in physical and electronic form. The viewing of Export
`Control Material through electronic means outside the territorial limits of the
`United States of America is similarly prohibited. The restrictions contained within
`this paragraph may be amended through the consent of the producing Party to the
`extent that such agreed to procedures conform with applicable export control laws
`and regulations. Notwithstanding the foregoing, to the extent that (i) a Producing
`Party of Export Control Material makes a witness available for deposition outside
`the United States, the deposing party may, to the extent permitted by law, transport
`(subject to the restrictions set forth in this Protective Order) such Party’s Export
`Control Material reasonably necessary for the deposition and may use the Export
`Control Materials at the deposition and (ii) the Export Control Material is used in
`the German Proceedings, Maxell may, to the extent permitted by law, transport and
`use (subject to the restrictions set forth in the Protective Orders) Apple’s Export
`Control Material only in the German Proceedings. Should the Receiving Party not
`be able to use the Export Control Materials at the deposition due to any export
`control regulations of the constructions of this Order, the Producing Party will make
`the witness available for deposition in the United States.
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`7.
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`Paragraph 6(d) of the Original Protective Order shall be amended as follows:
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`Legal Advice Based on Protected Material. Nothing in this Protective Order
`(d)
`shall be construed to prevent counsel from advising their clients with respect to this
`case or the German Proceedings based in whole or in part upon Protected Materials,
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 5 of 9 PageID #: 31975
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`provided counsel does not disclose the Protected Material itself except as provided
`in this Order.
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`8.
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`Paragraph 8(b)(iii) of the Original Protective Order shall be amended as follows:
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`Any outside expert or consultant retained by the Receiving Party to assist
`(iii)
`in this action or the German Proceedings, 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; (c) such expert or consultant accesses the materials in the
`United States only, and does not transport them to or access them from any foreign
`jurisdiction; and (d) no unresolved objections to such disclosure exist after proper
`notice has been given to all Parties as set forth in Paragraph 12 of the Original
`Protective Order;
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`9.
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`Paragraph 9(b)(ii) of the Protective Order shall be amended as follows:
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`(ii) Any outside expert or consultant retained by the Receiving Party to assist in this
`action or the German Proceedings, 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; (c)
`such expert or consultant 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; (d) such expert or consultant accesses the materials
`in the United States only, and does not transport them to or access them from any
`foreign jurisdiction; and (e) no unresolved objections to such disclosure exist after
`proper notice has been given to all Parties as set forth in Paragraph 12 of the Original
`Protective Order;
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`10.
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`To the extent authorized by the Protective Orders, Maxell shall be permitted to
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`transmit electronic copies of Export Documents to Maxell’s German Counsel pursuant to any of
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`the following methods: (i) encrypted email using an encryption tool that has a passphrase of at
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`least 20 characters in length and using at least 128-bit Advanced Encryption Standard (AES)
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`cipher option; (ii) a secure FTP site that implements 256 bit AES encryption over SSL and
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 6 of 9 PageID #: 31976
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`utilizes access controls, and the files containing the information are encrypted using a key length
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`of at least 20 characters and 256 bit AES encryption and are removed from the Secure FTP site
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`within 3 days; or (iii) hand-delivery, where the data is stored on an encrypted hard-drive using at
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`least AES 128-bit hardware encryption algorithm and a removable hardware key or an RFID
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`secured card.
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`11.
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`By stipulating to the entry of this Second Addendum to the Protective Orders, no
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`Party waives any right it otherwise would have to object to disclosing or producing any information
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`or item on any ground not addressed in this Protective Order. Similarly, no Party waives any right
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`to object on any ground to use in evidence of any of the material covered by this Protective Order.
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`This Protective Order shall not constitute a waiver of the right of any Party to claim in the German
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`Proceedings or otherwise that the Export Documents, or any portion thereof, is non-discoverable
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`or is not admissible in evidence in the Actions or any other proceeding.
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`12.
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`Use of Export Documents. Export Documents may be introduced or submitted
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`during one or more of the German Proceedings only if the Receiving Party seeks and obtains in
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`the German Proceedings an order from the German court protecting the confidentiality and limiting
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`the disclosure of the Export Documents with equivalent or greater protections provided under
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`German law as those set forth in the Protective Orders.
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`Page 6 of 6
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`.
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`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 29th day of January, 2021.
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 7 of 9 PageID #: 31977
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`EXHIBIT A – PROTECTIVE ORDER SUBSCRIPTION
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`I,
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`, acknowledge and declare that I have received a
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`copy of the original Protective Order as well as the first and second addendums thereto
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`(collectively, the “Order”) in Maxell, Ltd. v. Apple Inc., United States District Court, Eastern
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`District of Texas, Texarkana Division, Civil Action No. 5:19-cv-00036-RWS. Having read and
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`understood the terms of the Order, I agree to be bound by the terms of the Order, consent to
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`the jurisdiction of said Court for the purpose of any proceeding to enforce the terms of the
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`Order, and agree to accept service by email of any legal process required for any such
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`proceeding.
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`Name of individual:
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`Present occupation/job description:
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`Name of Company or Firm:
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`Business Address:
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`Email Address:
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`Dated:
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`[Signature]
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 8 of 9 PageID #: 31978
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`Exhibit B – ACCESS WAIVER
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`Maxell, Ltd. , on behalf of itself and any of its affiliates, employees, or representatives, (all,
`collectively, “Maxell”) acknowledge having received and read a copy of the original Protective
`Order as well as the first and second addendums thereto (collectively, the “Order”) in Maxell v.
`Apple, United States District Court for the Eastern District of Texas, Texarkana Division, Civil
`Action No. 5:19-cv-36-RWS.
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`In exchange for allowing Maxell’s German Counsel to access the Export Documents referenced
`in the Order in a manner consisted with that Order’s provisions, Maxell agrees to the following:
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`1. Maxell expressly waives any right, including without limitation German Code of Civil
`Procedure Section 299, to access, review, or receive copies of any Export Document (including
`insofar as they are referenced in pleadings or insofar as they are part of the record in the German
`Proceedings).
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`2. Maxell agrees not to attempt to access the Export Documents in any way, and agrees not to be
`present during any portion of any hearing in which any Export Document are referenced or
`discussed. To the extent Maxell seeks a copy of the record in any German Proceeding, Maxell’s
`German Counsel may procure such copy, redact any information derived from any Export
`Document, and only provide the redacted copy to Maxell. Maxell will not seek any copy of the
`record which contains any Export Document.
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`3. Maxell agrees that the Export Documents may contain highly confidential information that
`would irreparably damage Apple if publicly disclosed or accessed by Maxell. Maxell agrees to not
`to oppose any motion in the German Proceedings which seeks to preserve the confidentiality of
`the Export Documents, and will not oppose any opposition filed by Apple seeking to prohibit any
`third party from accessing the Export Documents.
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`4. Maxell consents to the jurisdiction of the United States District Court for the Eastern District of
`Texas for the purpose of any proceeding to enforce the terms of the Order in Maxell v. Apple, 5:19-
`cv-36, including the provisions of this Exhibit B.
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`5. Nothing in this Access Waiver prohibits Maxell’s German Counsel from accessing, reviewing,
`and relying on the Export Documents in a manner compliant with the requirements of the Order.
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`Name of Representative for Maxell:
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`Signer’s job description:
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`Name of Company:
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`Case 5:19-cv-00036-RWS Document 621 Filed 01/29/21 Page 9 of 9 PageID #: 31979
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`Address:
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`Dated:
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`[Signature]
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