UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
Good cause appearing based on the Joint Stipulation filed by the parties, and the Court being fully advised in the premises, IT IS HEREBY ORDERED as follows:
1. PURPOSES AND LIMITATIONS
This Action involves claims of patent infringement brought by Plaintiff Optiwave Semiconductor Corp. ("Optiwave" or "Plaintiff") against Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant") with respect to United States Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890 (collectively, the "Asserted Patents"), which are asserted against accused products including, but not limited to, the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver (collectively, the "Accused Products").
The parties acknowledge that the prosecution and defense of this Action will require the production and disclosure of confidential, proprietary, and trade secret information by both parties, including but not limited to: technical product design documents; semiconductor fabrication process specifications and parameters; source code and firmware; hardware description language (HDL) files; financial data, including revenue figures, cost structures, and profit margins; customer lists and customer-specific pricing information; business strategy documents; licensing agreements; patent prosecution files; and other competitively sensitive materials. The parties further acknowledge that production of such information is necessary to the fair and efficient resolution of this Action, and that the protections set forth herein are essential to safeguard the legitimate confidentiality interests of the parties and non-parties from whom discovery may be sought.
This Order is entered pursuant to Federal Rule of Civil Procedure 26(c) to protect the parties' legitimate interests in maintaining the confidentiality of such information while ensuring that the discovery process proceeds efficiently and in compliance with the Federal Rules of Civil Procedure and the Local Rules of this Court.
This Order does not confer blanket protections on any category of information. All confidentiality designations made pursuant to this Order are subject to challenge under the procedures set forth in Section 5 below, and no party shall be deemed to have conceded the propriety of any designation merely by initially accepting it.
Nothing in this Order shall be construed as a ruling on the admissibility, relevance, or discoverability of any discovery Material. The parties reserve all rights to object to discovery requests and to the admissibility of evidence at trial or in connection with any motion, irrespective of any designation made under this Order.
2. DEFINITIONS
As used in this Order, the following terms shall have the meanings set forth below:
2.1 "Action"
"Action" means the above-captioned case, Optiwave Semiconductor Corp. v. Lumos Photonics, Inc., Case No. 5:22-cv-03417-EJD, pending in the United States District Court for the Northern District of California, San Jose Division, including any and all related proceedings, motions, appeals, and remands arising therefrom.
2.2 "Producing Party"
"Producing Party" means the party or non-party that produces, discloses, or provides discovery Material in connection with this Action, whether pursuant to a formal discovery request, a subpoena, or a voluntary production.
2.3 "Receiving Party"
"Receiving Party" means the party or non-party that receives discovery Material produced, disclosed, or provided by the Producing Party.
2.4 "Discovery Material"
"Discovery Material" means any and all documents, electronically stored information ("ESI"), deposition testimony (including transcripts, videotapes, and audio recordings), interrogatory responses, responses to requests for admission, responses to requests for production, tangible things, or other materials produced, disclosed, or provided in discovery in this Action, including all copies, duplicates, extracts, summaries, compilations, indices, or descriptions thereof, in whatever form or medium.
2.5 "Confidential Information" or "CONFIDENTIAL"
"Confidential Information" or "CONFIDENTIAL" means discovery Material designated as "CONFIDENTIAL" pursuant to Section 3 of this Order. A Producing Party may designate discovery Material as CONFIDENTIAL where the Producing Party believes in good faith that such material constitutes confidential research, development, financial, commercial, or technical information, or other proprietary business information that is not generally known to the public and that the Producing Party has taken reasonable steps to maintain as confidential.
2.6 "Highly Confidential — Attorneys' Eyes Only" or "AEO"
"Highly Confidential — Attorneys' Eyes Only" or "AEO" means discovery Material designated as "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" pursuant to Section 3 of this Order. A Producing Party may designate discovery Material as AEO where the Producing Party believes in good faith that such material constitutes its most sensitive confidential trade secrets, proprietary technical information, source code, competitively sensitive financial data, or other information the disclosure of which to any employee, officer, or director of the opposing party could cause substantial competitive harm.
Without limiting the generality of the foregoing, AEO information specifically includes, but is not limited to:
(a) detailed technical design specifications for accused products or patented technology, including semiconductor fabrication process details such as photomask layouts, epitaxial growth parameters, doping profiles, waveguide geometries, and photodetector structures;
(b) source code, firmware, embedded software, and hardware description language (HDL) files, including Verilog, VHDL, and SystemVerilog code, as well as associated design verification testbenches;
(c) customer-specific pricing, contracts, purchase orders, volume commitments, and negotiated terms of sale;
(d) detailed cost and margin data, including bill-of-materials breakdowns, manufacturing cost models, yield data, and per-unit profitability analysis;
(e) unreleased product roadmaps, forward-looking business strategies, planned technology development initiatives, and internal competitive intelligence assessments.
2.7 "Prosecution Bar Material"
"Prosecution Bar Material" means any discovery Material that is subject to the Prosecution Bar provisions set forth in Section 8 of this Order.
2.8 "Qualified Person"
"Qualified Person" means any person authorized under Section 4 of this Order to receive Confidential Information or Highly Confidential — Attorneys' Eyes Only Information, as applicable.
2.9 "Outside Counsel"
"Outside Counsel" means the following attorneys and their respective law firms who are counsel of record or who are working on this Action:
(a) For Plaintiff Optiwave Semiconductor Corp.: attorneys at Calderwood & Harkness LLP who are counsel of record or who are actively working on this Action on behalf of Plaintiff, specifically including but not limited to Alan Ngo, Marcus Delgado, Omar Siddiqui, and Christy Bauer;
(b) For Defendant Lumos Photonics, Inc.: attorneys at Brannick Howell & Stein LLP who are counsel of record or who are actively working on this Action on behalf of Defendant, specifically including but not limited to Victoria Ashworth and Daniel Kowalski.
2.10 "In-House Counsel"
"In-House Counsel" means the following individuals:
(a) For Plaintiff Optiwave Semiconductor Corp.: Sandra Ellison, General Counsel, and Theodore ("Ted") Marchetti, Vice President of intellectual Property;
(b) For Defendant Lumos Photonics, Inc.: Richard Talbot, General Counsel.
The access rights of In-House Counsel are limited as specified in Section 4.2 of this Order.
2.11 "Expert" or "Consultant"
"Expert" or "Consultant" means any person retained by a party or by Outside Counsel for a party to provide expert testimony, technical consultation, or other consulting services in connection with this Action, and who has signed the Acknowledgment and Agreement attached hereto as Exhibit A. The term includes, but is not limited to, the following individuals:
(a) Dr. Harold Whitfield, Whitfield Technical Consulting Group, Inc.;
(b) Dr. Lawrence Kessler, Apex Claim Analytics LLC;
(c) Dr. Patricia Moreno, Compass Forensic Accounting LLP;
(d) Dr. Raymond Ng, Of Counsel / Technical Consultant, Brannick Howell & Stein LLP.
Additional Experts or Consultants may be retained by either party during the course of this Action, provided that each such individual executes the Acknowledgment and Agreement (Exhibit A) before being given access to any CONFIDENTIAL or AEO material.
3. DESIGNATING PROTECTED MATERIAL
3.1 Designation of Documents and ESI
A Producing Party may designate discovery Material as CONFIDENTIAL or HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY by marking or stamping each page of a document, or, for ESI, each document or production unit, with the appropriate legend. Acceptable forms of the legend include:
• "CONFIDENTIAL" or "CONFIDENTIAL — Subject to Protective Order, Case No. 5:22-cv-03417-EJD"
• "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" or "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY — Subject to Protective Order, Case No. 5:22-cv-03417-EJD"
For documents produced in native format (e.g., spreadsheets, databases, or multimedia files that cannot practicably be stamped), the designation may be made in the cover letter, transmittal email, or load file accompanying the production, identifying by Bates range(s) or file name(s) the specific documents or groups of documents so designated.
Redlines, marginalia, overlay stamps, endorsements, and Bates-stamped confidentiality footers are all acceptable methods of marking. The Producing Party shall apply the designation in a manner that does not obscure or render illegible the substantive content of the discovery Material.
3.2 Designation of Deposition Testimony
A party may designate deposition testimony as CONFIDENTIAL or HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY by stating on the record during the deposition that specific testimony or a line of questioning involves confidential or highly confidential information. Upon such a designation being made on the record, all persons not authorized to receive such material under this Order shall be excluded from the deposition room (or, in the case of a remote or virtual deposition session, shall be removed from the videoconference) for the duration of the designated testimony.
Alternatively, or in addition to any on-the-record designations, within fourteen (14) calendar days of receipt of the final deposition transcript, any party may designate specific transcript pages and lines as CONFIDENTIAL or AEO by providing written notice to all counsel of record. Such written notice shall identify the specific pages and line numbers that are subject to the designation and the designation level applicable to each.
Pending expiration of the fourteen (14)-day designation period described above, the entirety of any deposition transcript shall be treated as HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY. Upon expiration of the designation period, any portions of the transcript not designated by any party shall be treated as undesignated.
3.3 Designation of Interrogatory Responses and Other Written discovery
A Producing Party may designate interrogatory responses, responses to requests for admission, responses to requests for production, or other written discovery responses as CONFIDENTIAL or HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY by marking the document bearing such responses with the appropriate legend on each page containing protected information, or by including a prominent notice on the first page of the response identifying the specific responses or portions thereof that are designated and the applicable designation level.
3.4 Good Faith Requirement
All designations made pursuant to this Order must be made in good faith and must be limited to material that the Producing Party reasonably believes qualifies for the designated level of protection under the definitions set forth in Sections 2.5 and 2.6. Counsel for the designating party bear a continuing obligation to review designations and to modify or withdraw designations that are no longer supportable.
Mass or blanket designations of entire document productions without individualized review are disfavored and should be avoided. However, the Court recognizes that, in certain circumstances, the Producing Party may apply a uniform designation to categories of documents where the nature of the category itself supports the designation (for example, designating all source code files as AEO, or designating all customer contracts as CONFIDENTIAL). In such cases, the Producing Party shall remain prepared to justify the designation on a document-by-document basis if challenged and shall adjust specific document designations upon challenge where appropriate.
3.5 Inadvertent Failure to Designate
If a Producing Party inadvertently fails to designate discovery Material at the time of production, the Producing Party may designate such material after production by providing written notice to the Receiving Party identifying the specific material (by Bates number, file name, or other sufficient identification) and the designation level to be applied.
Upon receipt of such notice, the Receiving Party shall promptly treat the material in accordance with the newly applied designation and shall make reasonable efforts to retrieve any copies of such material that have previously been disseminated to persons beyond the scope of access permitted for the newly designated level. The Receiving Party shall not be held in contempt or otherwise sanctioned for any disclosure made prior to receipt of the notice, provided the Receiving Party acts promptly upon receiving the notice to comply with the newly applied designation.
4. ACCESS TO PROTECTED MATERIAL
4.1 CONFIDENTIAL Information — Authorized Recipients
Discovery Material designated CONFIDENTIAL may be disclosed to, and accessed by, only the following categories of persons:
(a) Outside Counsel for each party and their associated legal support staff, including paralegals, litigation support specialists, document review attorneys (including contract attorneys), legal secretaries, and other law firm personnel working on this Action under the supervision of Outside Counsel;
(b) In-House Counsel for each party, subject to the limitations set forth in Section 4.2 of this Order;
(c) The Court and Court personnel, including law clerks, courtroom deputies, court reporters, and other judicial staff;
(d) Experts and Consultants retained in connection with this Action who have executed the Acknowledgment and Agreement attached hereto as Exhibit A prior to receiving any CONFIDENTIAL material;
(e) The Producing Party's own officers, directors, and employees, to the extent such individuals require access to the Producing Party's own CONFIDENTIAL material in order to assist in the prosecution or defense of this Action;
(f) Court reporters and videographers engaged for depositions, hearings, or other proceedings in this Action;
(g) Any witness during the witness's deposition or in preparation for the witness's testimony at deposition, hearing, or trial, to the extent reasonably necessary for such preparation; provided, however, that the witness shall be shown only those documents relevant to the witness's anticipated testimony and shall not retain copies of any CONFIDENTIAL material after the conclusion of the witness's testimony or preparation session, unless the witness is otherwise a Qualified Person;
(h) Third-party document production vendors, e-discovery vendors, ESI hosting and review platform vendors, printing and copying services, and litigation support vendors engaged by Outside Counsel who have either signed the Acknowledgment and Agreement attached hereto as Exhibit A or are bound by equivalent confidentiality agreements with Outside Counsel that impose obligations no less restrictive than those set forth in this Order;
(i) Up to two (2) designated employees of each party, identified by name in advance to opposing counsel in writing, who are necessary to assist in the prosecution or defense of this Action and who have signed the Acknowledgment and Agreement attached hereto as Exhibit A prior to receiving any CONFIDENTIAL material. A party may substitute designated employees by providing written notice to opposing counsel, provided that any replaced individual shall continue to be bound by the terms of this Order with respect to all CONFIDENTIAL material previously received.
4.2 In-House Counsel Access Limitations
In-House Counsel for each party may access CONFIDENTIAL information of the opposing party, subject to the following limitations:
In-House Counsel who are involved in competitive decision-making — defined as substantive involvement in pricing decisions, product design, product development, marketing strategy, customer negotiations, or business development for products competitive with those at issue in this Action — shall not receive HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY information of the opposing party without the prior written consent of the Producing Party or further order of the Court. Whether an individual In-House Counsel is "involved in competitive decision-making" shall be assessed based on the individual's actual job responsibilities and activities, not merely the individual's title.
Theodore ("Ted") Marchetti, in his capacity as Vice President of intellectual Property at Optiwave Semiconductor Corp. and as a registered patent attorney (USPTO Reg. No. 58,304), is subject to the Prosecution Bar provisions set forth in Section 8 of this Order. Mr. Marchetti may receive AEO material of Defendant Lumos Photonics, Inc. only to the extent that his receipt of such material is not barred by the provisions of Section 8. In the event of any dispute regarding Mr. Marchetti's eligibility to receive specific AEO material, the parties shall meet and confer in good faith, and if unable to resolve the dispute, shall submit the issue to the Court.
Richard Talbot, General Counsel of Lumos Photonics, Inc., may access CONFIDENTIAL information of Plaintiff Optiwave Semiconductor Corp. The parties acknowledge that, as of the date of this Order, Mr. Talbot's role does not encompass direct involvement in the design or development of the Accused Products. Should Mr. Talbot's role change in a manner that implicates the competitive decision-making concerns described above, Plaintiff may raise the issue pursuant to Section 5 of this Order.
4.3 HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY Information — Authorized Recipients
Discovery Material designated HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY may be disclosed to, and accessed by, only the following categories of persons:
(a) Outside Counsel for each party and their associated legal support staff, including paralegals, litigation support specialists, document review attorneys (including contract attorneys), legal secretaries, and other law firm personnel working on this Action under the supervision of Outside Counsel;
(b) The Court and Court personnel, including law clerks, courtroom deputies, court reporters, and other judicial staff;
(c) Experts and Consultants retained in connection with this Action who have executed the Acknowledgment and Agreement attached hereto as Exhibit A prior to receiving any AEO material, subject to the Prosecution Bar provisions set forth in Section 8 of this Order;
(d) Court reporters and videographers engaged for depositions, hearings, or other proceedings in this Action;
(e) Third-party document production vendors, e-discovery vendors, ESI hosting and review platform vendors, and litigation support vendors as set forth in Section 4.1(h) above.
AEO material shall NOT be disclosed to any officer, director, employee, or agent of the Receiving Party, including In-House Counsel of the Receiving Party, unless specifically authorized by the written consent of the Producing Party or by order of the Court. Any request for such authorization shall be made in writing, identifying the individual(s) for whom access is sought, the specific categories of AEO material to which access is requested, and the reasons why such access is necessary. The Producing Party shall respond to any such request within ten (10) business days.
5. CHALLENGING DESIGNATIONS
5.1 Meet and Confer Requirement
A Receiving Party that believes discovery Material has been improperly designated — whether over-designated (i.e., designated at a higher level of protection than warranted) or under-designated (i.e., designated at a lower level of protection than warranted, or not designated at all when a designation is appropriate) — may challenge the designation by providing written notice to the Producing Party. Such written notice shall identify the specific material at issue (by Bates number, exhibit number, transcript page and line number, or other sufficient identification) and the basis for the challenge, including the designation level the challenging party believes is appropriate and the reasons therefor.
Within ten (10) business days of receiving such notice, the parties shall meet and confer in good faith to attempt to resolve the dispute. The meet and confer may be conducted by telephone, videoconference, or in person, and shall include counsel with sufficient authority and familiarity with the disputed material to engage in meaningful discussion. The parties are encouraged to resolve designation disputes without Court intervention wherever possible.
5.2 Motion Practice
If the parties are unable to resolve the dispute through the meet-and-confer process described in Section 5.1, the challenging party may file a motion with the Court seeking to modify or remove the designation, or to re-designate the material at a different level of protection. Any such motion shall be filed in accordance with the applicable provisions of the Civil Local Rules of this Court and shall be accompanied by a certification that the parties have met and conferred in good faith and have been unable to reach agreement.
The burden of proving the appropriateness of the confidentiality designation shall rest with the Producing Party. The Producing Party must demonstrate, with respect to each item or category of material at issue, that the designated material falls within the scope of the applicable definition set forth in Section 2.5 or 2.6 and that good cause exists under Federal Rule of Civil Procedure 26(c) for the protection sought.
5.3 Interim Treatment
Pending resolution of any challenge to a confidentiality designation, whether through the meet-and-confer process or through motion practice, the discovery Material at issue shall continue to be treated in accordance with its current designation. No party shall be required to alter its treatment of the challenged material until the dispute is resolved by agreement of the parties or by order of the Court.
6. USE OF PROTECTED MATERIAL
6.1 Litigation-Only Use Restriction
All discovery Material designated as CONFIDENTIAL or HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY shall be used solely for the purposes of prosecuting or defending this Action, including any related motions, hearings, trial, post-trial proceedings, and any appeal, and shall not be used for any other purpose whatsoever. Without limiting the generality of the foregoing, such material shall not be used for any business, commercial, competitive, personal, regulatory, administrative, or other litigation purpose. This restriction applies to all Qualified Persons who receive access to such material, regardless of whether the individual is an attorney, expert, consultant, or other person.
6.2 Court Filings
If a party seeks to file discovery Material designated as CONFIDENTIAL or AEO with the Court, whether as an exhibit to a motion, a declaration, or any other filing, the filing party shall comply with Civil Local Rule 79-5 of the Northern District of California. Specifically, the filing party shall file an Administrative Motion to File Under Seal, supported by a declaration from a person with knowledge establishing a compelling reason or particularized showing of good cause why the material qualifies for sealing under the applicable legal standard, as set forth in Kamakana v. City and County of Honolulu, 447 F.3d 1172 (9th Cir. 2006), and its progeny.
The Producing Party whose material is sought to be filed shall have the opportunity to submit its own declaration in support of sealing. The filing party shall serve the Producing Party with notice of the intent to file such material at least five (5) business days before filing the Administrative Motion to File Under Seal, unless a shorter period is necessitated by exigent circumstances and approved by the Court.
Discovery Material shall not be filed under seal absent a showing of good cause to the satisfaction of the Court. The parties acknowledge that the fact that material has been designated as CONFIDENTIAL or AEO under this Order does not, standing alone, establish good cause for sealing under Civil Local Rule 79-5 or applicable Ninth Circuit precedent.
6.3 Use at Depositions
CONFIDENTIAL or AEO material may be used during depositions in this Action, subject to the access limitations set forth in Section 4. When AEO material is used during a deposition, the designating party may request that all persons not authorized to receive AEO material be excluded from the deposition room (or virtual deposition session) for the relevant portion of the examination.
Deposition exhibits containing AEO material shall be clearly marked with the "HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY" legend and shall not be provided to, retained by, or shown to the deponent or any other person present at the deposition who is not an authorized recipient of AEO material under Section 4.3, unless the deponent is an employee or agent of the Producing Party or is otherwise a Qualified Person authorized to receive AEO material. Copies of deposition exhibits containing AEO material shall be collected from unauthorized recipients at the conclusion of the relevant deposition testimony.
6.4 Use at Trial or Hearing
The parties shall meet and confer at least fourteen (14) calendar days prior to trial or any evidentiary hearing regarding the treatment of CONFIDENTIAL or AEO material that may be offered as exhibits, used in the examination of witnesses, or otherwise presented in open court or in chambers. The parties shall use reasonable efforts to reach agreement on procedures to protect confidential material while maximizing public access to judicial proceedings consistent with applicable law.
The Court retains full discretion to determine whether material shall be presented in open court, in a closed courtroom session, or under seal, and may impose such conditions and limitations as it deems appropriate to balance the parties' confidentiality interests against the presumption of public access to judicial proceedings.
7. HANDLING AND STORAGE
7.1 Physical Documents
All hard copies of discovery Material designated as CONFIDENTIAL or AEO shall be stored in secure locations (such as locked offices, locked file cabinets, or secured file rooms) that are accessible only to Qualified Persons authorized to receive such material under Section 4. Such material shall not be left unattended in publicly accessible areas, including conference rooms, reception areas, common work areas, or any location where unauthorized persons may view or access the material.
7.2 Electronic Documents and ESI
All electronic copies of CONFIDENTIAL or AEO material shall be stored on secure servers, password-protected computers, encrypted storage media, or secure document review platforms that are accessible only to Qualified Persons authorized to receive such material under Section 4. Access controls shall be maintained to prevent unauthorized access, and reasonable measures shall be taken to ensure that electronic copies are not inadvertently transmitted to unauthorized persons.
Cloud-based storage of CONFIDENTIAL or AEO material is permitted, provided that the cloud hosting provider maintains reasonable security measures consistent with industry standards, including but not limited to encryption of data at rest and in transit, multi-factor authentication, access logging, and compliance with applicable data security regulations. Outside Counsel shall exercise reasonable diligence in selecting and monitoring cloud hosting providers.
7.3 No Unauthorized Copying or Dissemination
Qualified Persons shall not copy, reproduce, photograph, or otherwise duplicate CONFIDENTIAL or AEO material except as reasonably necessary for the prosecution or defense of this Action. Qualified Persons shall not disseminate, distribute, transmit, or otherwise make available CONFIDENTIAL or AEO material to any person not authorized to receive such material under this Order. All copies, reproductions, and duplicates shall be subject to the same protections and obligations as the original material.
7.4 Source Code
Source code designated as HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY shall receive the following heightened protections:
(a) Inspection. Source code shall be made available for inspection only at the offices of Outside Counsel for the Producing Party, or at such other mutually agreed-upon location as the parties may designate in writing. Inspection shall take place on a standalone, non-networked computer provided by the Producing Party or its counsel. The computer shall not be connected to the internet, to any local area network, or to any external storage device during the inspection session.
(b) Copying Restrictions. No copies of source code shall be made, except as specifically necessary for expert analysis, claim construction, or preparation of court filings. Any such copies shall be maintained under the same security protocols applicable to the inspection computer and shall be limited to the minimum excerpts necessary for the purpose for which the copy is made. Any copies made for inclusion in expert reports, briefs, or other filings shall be limited to the specific excerpted portions relevant thereto.
(c) Return or Destruction. All copies of source code, including any excerpts or printouts, shall be returned to the Producing Party or destroyed upon conclusion of the expert's analysis, preparation of the relevant filing, or termination of this Action, whichever occurs first. The destruction or return shall be certified in writing.
(d) Access Limitations. Source code inspection shall be limited to Outside Counsel and Experts or Consultants who have signed the Acknowledgment and Agreement (Exhibit A) and who are not subject to the Prosecution Bar set forth in Section 8 of this Order, or who have executed the Prosecution Bar Certification (Exhibit B) and are in compliance with the terms thereof.
(e) Inspection Procedures. The Producing Party shall make source code available for inspection within ten (10) business days of a written request by the Receiving Party. Inspection sessions shall be scheduled at mutually convenient times during normal business hours. The Receiving Party's authorized representatives shall be permitted to take handwritten notes during the inspection, provided that such notes are treated as AEO material and are subject to all of the protections of this Order.
8. PROSECUTION BAR
8.1 Scope of Prosecution Bar
Any person who receives HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY technical information of an opposing party — including but not limited to product design documents, semiconductor fabrication process specifications, source code, hardware description language (HDL) files, and unreleased product architectures — shall not participate in the prosecution of patents or patent applications before the United States Patent and Trademark Office ("USPTO") or any foreign patent office that relate to the technology at issue in this Action. For purposes of this Section 8, the "technology at issue in this Action" encompasses the following subject matter areas:
(a) silicon photonics waveguide coupling, including grating couplers, edge couplers, and evanescent coupling structures on silicon-on-insulator (SOI) platforms;
(b) germanium-on-silicon photodetectors, including Ge-on-Si avalanche photodiodes and PIN photodetectors;
(c) integrated wavelength-division multiplexing (WDM) on silicon, including arrayed waveguide gratings (AWGs), micro-ring resonators, and Echelle gratings fabricated on silicon photonic platforms; and
(d) driver circuits for silicon photonic Mach-Zehnder modulators (MZMs), including differential driver topologies, pre-emphasis and equalization circuits, and associated control logic.
The Prosecution Bar shall apply for a period beginning upon the date of the barred individual's first access to AEO technical information of an opposing party and ending two (2) years after the final termination of this Action, including the exhaustion or expiration of all rights of appeal.
For purposes of this Section, "prosecution" includes, without limitation, directly or indirectly drafting, amending, advising on, or otherwise participating in the preparation or filing of patent applications, responses to office actions, continuation applications, divisional applications, requests for continued examination, requests for inter partes review or post-grant review, or any ex parte or inter partes proceedings before the USPTO or any foreign patent office.
8.2 Persons Subject to Prosecution Bar
Outside Counsel, Experts, and Consultants who access AEO technical information of an opposing party are subject to the Prosecution Bar described in Section 8.1. The following specific applications are noted:
(a) Theodore ("Ted") Marchetti (USPTO Reg. No. 58,304), Vice President of intellectual Property at Optiwave Semiconductor Corp. and a registered patent attorney, shall not receive AEO technical information produced by Defendant Lumos Photonics, Inc. if he is currently involved in, or reasonably expects to become involved in, prosecuting Optiwave patents or patent applications related to the subject technology described in Section 8.1. The parties acknowledge that, as of the date of this Order, Mr. Marchetti is actively involved in the prosecution of Optiwave's patent portfolio in the silicon photonics space, and accordingly, Mr. Marchetti shall not receive AEO technical information of Lumos absent further agreement of the parties or order of the Court.
(b) Alan Ngo (USPTO Reg. No. 52,871), a registered patent attorney at Calderwood & Harkness LLP, is serving solely as litigation counsel for Plaintiff Optiwave Semiconductor Corp. in this Action and is not engaged in patent prosecution for Optiwave or any other client with respect to the subject technology. Mr. Ngo may receive AEO technical information of Lumos, provided that he executes the Prosecution Bar Certification attached hereto as Exhibit B and remains in compliance with the terms of Section 8.1 throughout the bar period.
8.3 Exceptions
The Prosecution Bar set forth in this Section 8 shall not apply to:
(a) Persons who receive only CONFIDENTIAL (not AEO) material of an opposing party;
(b) Persons who access only publicly available information about the opposing party's products, including published product specifications, marketing materials, published patent applications and issued patents, and information available on the opposing party's website or in public filings;
(c) Patent prosecution activities that are unrelated to the technology at issue in this Action as defined in Section 8.1, including prosecution of patents directed to technologies, fields, or applications that do not overlap with silicon photonics waveguide coupling, germanium-on-silicon photodetectors, integrated WDM, or MZM driver circuits.
8.4 Certification
Before receiving any AEO technical information of an opposing party, any person who will be subject to the Prosecution Bar under Section 8.1 shall execute and deliver to the Producing Party a Prosecution Bar Certification in substantially the form attached hereto as Exhibit B. By signing the Certification, the individual certifies that he or she is not currently engaged in the prosecution of patents or patent applications related to the subject technology, or alternatively, agrees to cease such activities for the duration of the bar period. The executed Certification shall be provided to the Producing Party's counsel at least five (5) business days before the individual's first access to AEO technical information.
9. NON-PARTY DISCOVERY MATERIALS
9.1 Application to Third Parties
This Order applies to discovery Material produced by non-parties in this Action, whether such production is made pursuant to a subpoena issued under Federal Rule of Civil Procedure 45, a voluntary production, or any other lawful means. A non-party may designate its own produced materials as CONFIDENTIAL or HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY in the same manner as a party under Section 3 of this Order. Non-party designations shall be entitled to the same protections and shall be subject to the same challenge procedures as designations made by a party.
If a non-party does not designate its materials at the time of production, the Receiving Party shall treat such materials as undesignated and not subject to the protections of this Order, unless and until a designation is subsequently made by the non-party or by a party to this Action that has a legitimate interest in the confidentiality of the non-party's materials.
9.2 Notice to Non-Parties
If a party to this Action seeks to disclose a non-party's CONFIDENTIAL or AEO material to any person not listed in Section 4 of this Order, the party shall provide at least ten (10) business days' advance written notice to the non-party (if the non-party has appeared in this Action, has provided a contact address, or is otherwise reasonably identifiable and locatable), describing the material to be disclosed, the proposed recipient, and the purpose of the disclosure. The non-party shall have the opportunity to object to such disclosure within the ten (10) business day notice period, and any unresolved disputes shall be submitted to the Court for resolution.
10. MODIFICATION OF THE ORDER
This Order may be modified by the Court at any time upon motion of any party or non-party for good cause shown, or by written stipulation of the parties approved by the Court. Any party or affected non-party may seek modification of this Order by filing a motion in accordance with the applicable provisions of the Federal Rules of Civil Procedure and the Local Rules of this Court.
Any modification of this Order shall not retroactively affect the protections applicable to material previously produced under the terms of this Order as they existed at the time of production, unless the modification specifically so provides. The parties shall continue to treat all previously produced material in accordance with its existing designations unless and until the modification expressly alters such treatment.
11. ENFORCEMENT
11.1 Remedies for Violation
Any violation of this Order may be punishable by contempt of court and/or any other remedies available to the Court or the aggrieved party under applicable law, including but not limited to sanctions under Federal Rule of Civil Procedure 37, the Court's inherent authority, and 28 U.S.C. § 1927. The availability of any particular remedy shall not preclude the aggrieved party from seeking any other available remedy, whether at law or in equity.
11.2 Inadvertent Disclosure
If CONFIDENTIAL or AEO material is inadvertently disclosed to a person not authorized to receive it under this Order, the disclosing party shall promptly notify the Producing Party of the inadvertent disclosure, identifying the material disclosed and the person(s) to whom it was disclosed. The disclosing party shall take all reasonable steps to retrieve the material from the unauthorized recipient(s) and to ensure that such person(s) do not further disseminate or use the material. The unauthorized recipient(s) shall be instructed not to use, copy, or disclose the material and to return or destroy all copies in their possession.
An inadvertent disclosure made in compliance with this Section shall not be deemed a waiver of the protections afforded by this Order, provided that the disclosing party acts promptly and in good faith to remedy the disclosure.
11.3 Clawback Provision (FRE 502(d))
Pursuant to Federal Rule of Evidence 502(d), the Court hereby orders that the production or disclosure of information or communications that are protected by the attorney-client privilege or the work-product doctrine in this Action, whether inadvertent or otherwise, shall not constitute a waiver of the privilege or protection in this Action or in any other federal or state proceeding.
If a Producing Party discovers that it has produced documents or information that are protected by the attorney-client privilege or the work-product doctrine, the Producing Party shall promptly notify the Receiving Party in writing, identifying the specific materials at issue and the basis for the privilege or protection claim. Upon receipt of such notification, the Receiving Party shall, within seven (7) business days:
(a) return all copies of the identified materials (including any electronic copies) to the Producing Party;
(b) sequester all copies of the identified materials and cease any further review, use, or dissemination of such materials; or
(c) destroy all copies of the identified materials and certify such destruction in writing to the Producing Party.
The Receiving Party shall not use or refer to the substance of any clawed-back material in any filing, motion, deposition, hearing, or other proceeding, unless the Receiving Party challenges the privilege claim pursuant to the procedures set forth in Federal Rule of Civil Procedure 26(b)(5)(B), and the Court rules that the material is not privileged. If the Receiving Party contests the claim of privilege, the Receiving Party shall promptly present the material to the Court under seal for an in camera determination without disclosing the material to any other person.
12. RETURN OR DESTRUCTION OF PROTECTED MATERIAL UPON CONCLUSION OF ACTION
12.1 Obligation to Return or Destroy
Within sixty (60) calendar days after the final termination of this Action (defined as the later of (i) the entry of a final judgment, order of dismissal, or settlement, and (ii) the exhaustion or expiration of all rights of appeal or other post-judgment review), each Receiving Party shall, at the election of the Producing Party:
(a) return all discovery Material designated CONFIDENTIAL or AEO — including all copies, duplicates, excerpts, summaries, compilations, notes, memoranda, and other materials containing, reflecting, or derived from such material — to the Producing Party; or
(b) destroy all such material and provide a written certification of destruction to the Producing Party, signed by counsel for the Receiving Party, confirming that all copies, duplicates, excerpts, summaries, compilations, notes, memoranda, and other materials containing, reflecting, or derived from the Producing Party's CONFIDENTIAL or AEO material have been destroyed.
The Producing Party shall notify the Receiving Party in writing of its election (return or destruction) within thirty (30) calendar days after the final termination of this Action. If the Producing Party fails to make a timely election, the Receiving Party shall destroy the material and provide the written certification described above.
12.2 Exceptions — Retention by Outside Counsel
Notwithstanding the obligations set forth in Section 12.1, Outside Counsel for each party may retain one (1) archival copy of all pleadings, motion papers, briefs, deposition transcripts, expert reports, trial exhibits, correspondence, and attorney work product that contain or reflect CONFIDENTIAL or AEO material of the opposing party. Such archival copy shall be retained solely for the following purposes:
(a) establishing compliance with professional responsibilities and ethical obligations, including obligations under the applicable rules of professional conduct;
(b) responding to any future malpractice claim, bar disciplinary proceeding, or other proceeding in which Outside Counsel's conduct in this Action is at issue; or
(c) complying with mandatory document retention obligations imposed by applicable law, regulation, or court order.
Such retained material shall continue to be subject to all confidentiality obligations of this Order in perpetuity, including the litigation-only use restriction set forth in Section 6.1, and Outside Counsel shall maintain such material in accordance with the handling and storage requirements of Section 7.
12.3 Certification of Compliance
Within seventy-five (75) calendar days after the final termination of this Action, counsel for each party shall serve on opposing counsel a written certification confirming that all obligations under this Section 12 have been satisfied, including the return or destruction of all CONFIDENTIAL and AEO material (or, where applicable, the identification of material retained under Section 12.2). The certification shall identify any material retained under Section 12.2 and confirm that such material is being maintained in compliance with this Order.
13. SURVIVAL AND DURATION
The obligations imposed by this Order shall survive the termination of this Action, regardless of the manner of termination, whether by settlement, voluntary dismissal, involuntary dismissal, entry of judgment, or otherwise, and shall survive any appeal or remand. The confidentiality protections set forth in this Order shall remain in full force and effect indefinitely, unless modified or terminated by further order of this Court or by written agreement of all parties, approved by the Court. All Qualified Persons who have received CONFIDENTIAL or AEO material shall remain bound by the terms of this Order and the Acknowledgment and Agreement (Exhibit A) they have executed, regardless of the termination of this Action or the termination of their engagement or employment.
14. NO WAIVER OF RIGHTS
Nothing in this Order shall be construed as:
(a) a waiver of any party's right to object to any discovery request on any ground, including but not limited to relevance, privilege, work-product protection, proportionality, burden, or any other objection available under the Federal Rules of Civil Procedure or applicable law;
(b) a determination by the Court of the admissibility, relevance, or authenticity of any discovery Material, whether or not designated as CONFIDENTIAL or AEO under this Order;
(c) a waiver of any claim of trade secret protection, attorney-client privilege, work-product protection, or any other privilege, immunity, or protection, whether arising under federal law, state law, or common law;
(d) a waiver of the right of any party to seek additional, different, or modified protective measures, whether by motion to the Court or by stipulation of the parties, at any time during the pendency of this Action or thereafter.
15. GOVERNING LAW AND JURISDICTION
This Order shall be governed by and construed in accordance with the Federal Rules of Civil Procedure, the Federal Rules of Evidence (including Rule 502(d) as set forth in Section 11.3), and the Local Rules of the United States District Court for the Northern District of California. To the extent any provision of this Order conflicts with any applicable rule or statute, the rule or statute shall control.
The Court retains continuing jurisdiction to enforce, interpret, and modify this Order, even after the conclusion of this Action, including after any settlement, dismissal, judgment, or appeal. Any person who has signed the Acknowledgment and Agreement (Exhibit A) or the Prosecution Bar Certification (Exhibit B) consents to the personal jurisdiction of this Court for purposes of enforcement of this Order.
IT IS SO ORDERED.
Dated: September _, 2022
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HON. EDWARD J. TORVELIS United States District Judge