Parking Technology Holdings LLC v. Park Assist, LLC

Background

The parties anticipated exchanging discovery containing confidential, proprietary, trade-secret, and commercially sensitive information. Through counsel, they stipulated to a confidentiality agreement and protective order under Federal Rule of Civil Procedure 26(c). The court found good cause for an appropriately tailored order governing the pretrial phase of the action and entered it on October 6, 2020.

The order defines “Discovery Material” as information produced or disclosed during discovery. It defines “Protected Material” as discovery material designated “CONFIDENTIAL,” “CONFIDENTIAL—OUTSIDE ATTORNEYS’ EYES ONLY,” or “CONFIDENTIAL—OUTSIDE ATTORNEYS’ EYES ONLY—SOURCE CODE.” It permits designations for categories including previously undisclosed financial information, ownership or control information about nonpublic companies, business and marketing plans, personal or intimate information, and other categories the court later protects. Publicly disseminated advertising and materials showing on their face that they were disseminated publicly are excluded from Protected Material.

Disclosure and Use Restrictions

Confidential material may be disclosed only to listed recipients, including up to two employees of a party who sign a nondisclosure agreement, counsel and litigation support personnel, vendors hired for the case, mediators or arbitrators, certain document-related recipients, potential witnesses, experts and consultants, deposition stenographers, and the court. Outside-Attorneys’-Eyes-Only material is subject to tighter restrictions and generally may be disclosed to case counsel, specified vendors, mediators or arbitrators, certain document-related recipients, experts or consultants meeting the order’s requirements, stenographers, and the court.

Recipients may use protected material only to prosecute or defend this action and related appeals. They may not use it for business, commercial, competitive, or other litigation purposes. The order requires secure storage in the United States and prohibits exporting protected material outside the United States or releasing it to a foreign national. It also requires reasonable precautions against unauthorized or inadvertent disclosure. Within 60 days after final disposition, including appeals, recipients generally must return or destroy protected material and certify that they have not retained copies, subject to an archival-copy exception for specified litigation materials kept by the parties’ specially retained attorneys.

Court Filings and Challenges

A party filing material under seal must file a letter brief and supporting declaration explaining on a particularized basis why continued sealing is justified. The order states that the court retains discretion over confidential treatment of discovery submitted in connection with motions and is unlikely to seal material introduced at trial without the required findings. Parties must publicly file redacted versions of confidential court submissions and file unredacted versions under seal. A party may object to a confidentiality designation or request additional disclosure limits; unresolved disputes must be presented to the court under its individual practices.

Source-Code Protections

The order establishes special procedures for source code designated “CONFIDENTIAL—OUTSIDE ATTORNEYS’ EYES ONLY—SOURCE CODE.” Such material may be reviewed by eligible outside counsel and qualified outside experts or consultants, among others listed in the order. In-person review must occur in a secure room on a computer without internet or network access, with disabled access ports and other security measures. Reviewers may use a separate computer for encrypted electronic notes and may take handwritten notes, but may not copy source code into notes or remove source-code copies from the review room except as the order permits.

The order permits limited printing when reasonably necessary for court filings, expert reports, contentions, or trial exhibits. It sets presumptive limits of 450 pages per software release and 40 continuous pages, subject to agreement or a court order, and provides a process for objections and motions to compel. It also addresses source code at depositions, source code included in court filings, copying logs, storage, and destruction.

Patent-Related Counsel Restrictions

Plaintiff’s counsel who access defendant’s protected materials may not prosecute patents on behalf of plaintiff concerning the subject matter of the patent-in-suit during the case and for two years after the case ends, including appeals. The order excludes participation in post-grant review proceedings, including reexaminations, reissues, and inter partes reviews, from that bar. Counsel who access defendant’s Outside-Attorneys’-Eyes-Only material or source code also may not advise, participate, or assist in acquiring patents or patent applications relating to the asserted patent or the subject matter of the protected material they reviewed. Those restrictions begin when the individual first receives the specified material and generally end two years after settlement or dismissal of defendant from the action or the final nonappealable termination of the action.

Ruling and Effect

The court entered the parties’ stipulated confidentiality agreement and protective order. The order does not decide the patent dispute, the admissibility of evidence, or any party’s objections to discovery. It binds parties, their representatives, agents, experts, consultants, third parties providing discovery, and others with actual or constructive notice. The court retains jurisdiction as necessary to enforce the order or impose contempt sanctions. The order survives termination of the litigation.