Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd.

Background

Kannuu Pty Ltd. and Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. jointly stipulated to a protective order under Federal Rule of Civil Procedure 26(c). They anticipated that discovery and required disclosures could include confidential, proprietary, trade-secret, and commercially sensitive information. The order refers to several patents as the “Asserted Patents,” including U.S. Patent Nos. 8,370,393; 8,676,852; 8,996,579; 9,436,354; and 9,697,264.

The document is a discovery order, not a decision on the parties’ underlying patent dispute. It does not determine infringement, patent validity, damages, or any other merits issue.

Confidentiality categories and permitted use

The order creates three designations: “CONFIDENTIAL,” “CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY,” and “CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY – SOURCE CODE.” Protected material may be used only for this case or a related appeal, and not for another lawsuit, patent prosecution or acquisition, patent reexamination or reissue proceedings, or a business or competitive purpose.

“CONFIDENTIAL” material may generally be shared with outside counsel, up to three designated representatives of the receiving party, approved outside experts or consultants, court personnel, certain litigation-support personnel, a mediator and staff, and others with the producing party’s written consent. The more restrictive “OUTSIDE ATTORNEYS’ EYES ONLY” material may generally be shared only with qualifying outside counsel, approved experts or consultants, court personnel, certain litigation-support personnel, a mediator and staff, or persons approved in writing by the producing party.

The order requires notice before certain representatives, experts, or consultants receive protected material. The notice must include information such as the person’s name, curriculum vitae, current employer and title, employment and consulting relationships, relevant patent applications, and recent testimony. The producing party generally has fourteen days to object for good cause. The person must also sign an agreement to be bound by the protective order before receiving protected material.

Patent prosecution bar and source code

A person acting for Kannuu who receives “OUTSIDE ATTORNEYS’ EYES ONLY” or “OUTSIDE ATTORNEYS’ EYES ONLY – SOURCE CODE” material may not, without the producing party’s written consent, participate in specified patent-prosecution or patent-acquisition activities involving search and navigation technology for media-related products. The restriction begins when the person first receives the covered material and ends two years after final resolution of the action, including appeals. The order states that the restriction does not prevent counsel from participating in proceedings challenging patent validity, while identifying certain proceedings on behalf of a patentee in which participation is barred.

Source code may receive the special source-code designation if it includes confidential, proprietary, or trade-secret source code. The order does not require any party to produce source code or admit that source code is discoverable. If source code is produced, it must generally be reviewed in a secure room on a computer without internet or network access, with no recordable devices allowed. Reviewers may take non-electronic notes but may not copy source code into those notes. Printing is limited to portions reasonably necessary for court filings, pleadings, or a testifying expert’s report, with a general limit of twenty total pages and additional procedures for objections.

The order also limits who may review source code, requires advance identification and daily logs for reviewers, restricts paper and electronic copies, and establishes special procedures for using source code at depositions or in court filings.

Challenges, inadvertent disclosure, and duration

A party may challenge a confidentiality designation later rather than immediately. The parties must first attempt to resolve the dispute, and the receiving party may then ask the court to rule on the designation. The producing party bears the burden of justifying a disputed designation. Until the designation is withdrawn or changed by the court, the material remains protected.

The order provides procedures for subpoenas, public filings, inadvertent production of privileged material, mistaken failure to designate material, and unauthorized disclosure. Protected material generally may not be placed in the public record without the producing party’s permission or a court order, and requests to file it under seal must follow the court’s procedures. Within ninety days after final disposition, each party must return or destroy the producing party’s discovery material, subject to limited archival retention by outside counsel.

Ruling

Judge Edgardo Ramos found good cause and ordered the stipulated protective order. The order’s confidentiality obligations continue after the case ends unless the producing party agrees otherwise in writing or a court orders otherwise. The Southern District of New York retains jurisdiction to interpret and enforce the order and to resolve disputes arising from it.