Free Response to Cross Motion - District Court of Federal Claims - federal

Case 1:08-cv-00069-LSM

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IN THE UNITED STATES COURT OF FEDERAL CLAIMS AVOCENT REDMOND CORP., a Washington corporation, Plaintiff, v. THE UNITED STATES, Defendant. No. 08-69C Judge Lawrence S. Margolis

DECLARATION OF DONALD L. JACKSON IN SUPPORT OF AVOCENT REDMOND'S OPPOSITION TO ROSE'S CROSS-MOTION FOR A PROTECTIVE ORDER I, Donald L. Jackson, hereby declare as follows: 1. I am a member of Davidson Berquist Jackson & Gowdey, LLP, counsel to

plaintiff Avocent Redmond Corp. in the above-captioned litigation. I am a member in good standing of the bar of this Court and of the Supreme Court of Virginia. 2. Attached hereto as Exhibit 1 is a true and correct copy of the protective order

Rose urged Judge Pechman to adopt in the Seattle action. 3. Attached hereto as Exhibit 2 is a true and correct copy of Rose's Cross-Motion for

a Protective Order filed in the Seattle action. 4. Seattle action. 5. Attached hereto as Exhibit 4 is a true and correct copy of Judge Pechman's order Attached hereto as Exhibit 3 is a true and correct copy of the docket sheet for the

in the Seattle action denying the defendants' proposed version of the protective order that included a "prosecution bar."

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CERTIFICATE OF SERVICE The undersigned hereby certifies that Rose's counsel was served by hand-delivery on June 30, 2008. The undersigned hereby certifies that the counsel of record who are deemed to have
consented to electronic service are being served today with a copy of this document via the Court's CM/ECF system per RCFC 5.2. Any other counsel of record will be served by electronic mail, facsimile transmission and/or first class mail on this same date.

/s/ Donald L. Jackson________________ Donald L. Jackson

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Exhibit 1

Case 1:08-cv-00069-LSM Case 2:06-cv-01711-MJP

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 v. ROSE ELECTRONICS, a Texas general partnership; PETER MACOUREK, an individual; DARIOUSH "DAVID" RAHVAR, an individual; ATEN TECHNOLOGY INC., a California corporation; ATEN INTERNATIONAL CO., LTD., a Taiwanese Company; TRIPPE MANUFACTURING COMPANY, an Illinois corporation; and BELKIN CORPORATION, a Delaware corporation, Defendants.

THE HONORABLE MARSHA J. PECHMAN

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE AVOCENT REDMOND CORP., a Washington corporation, Plaintiff,

NO. C06-1711-MJP

[PROPOSED] PROTECTIVE ORDER

THIS MATTER having come before the Court by motion of the parties and the Court having determined that there is good cause under Federal Rule of Civil Procedure 26(c) for entry of a protective order to limit disclosure of confidential research, development, and commercial information as those terms are used in Federal Rule of Civil Procedure 26(c)(7), and information that the party is under a legal duty to maintain in confidence,

CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

[PROPOSED] PROTECTIVE ORDER - 4

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1001 Fourth Avenue, Suite 3900 Seattle, Washington 98154-1051 Tel (206) 625-8600 Fax (206) 625-0900

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THEREFORE, IT IS HEREBY ORDERED that: 1. Scope. This Protective Order shall govern any information produced or

disclosed in this action by any party or by any third party. 2. Proprietary Information. "Proprietary Information" means any information,

document, electronically stored information, or thing that contains or is a trade secret or other confidential research, development, or commercial information as those terms are used in Federal Rule of Civil Procedure 26(c)(7), and information that the party is under a legal duty to maintain in confidence, provided that such information, document, electronically stored information, or thing is designated as set forth herein. Any Proprietary Information may be designated as CONFIDENTIAL. Proprietary Information relating to highly sensitive financial information, including but not limited to, customer identification, sales and cost information, sales prices to specific customers, profit margins, trends, projections, current and prospective marketing strategies or other highly sensitive financial information not yet publicly disclosed, and highly sensitive technical information, including but not limited to, product design and development materials, schematics, gerber files, layouts, source code, CAD drawings, specifications or other highly sensitive technical information not yet publicly disclosed, may be designated as ATTORNEYS EYES ONLY. Any party to this action and any third party may designate as CONFIDENTIAL or ATTORNEYS EYES ONLY all or part of the following material: (a) answers to interrogatories or requests for admission; (b) deposition testimony; (c) documents produced by it or made available for inspection; and (d) any other materials or information produced or disclosed during the course of this litigation. 3. Designation of Documentary Material. Documentary material may be

designated as CONFIDENTIAL or ATTORNEYS EYES ONLY by stamping or otherwise marking each page with the appropriate confidentiality designation and with the identity of
CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

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the classifying party unless it is indicated as part of the production number (e.g., "Plaintiff P00001") contained on the document. Except with respect to documents produced by any party prior to the execution by the parties of this Stipulated Protective Order, the identification and designation of Proprietary Information shall be made at the time when the answer to the interrogatory or the answer to the request for admission is served and when a copy of the document is provided to the requesting party. Unless otherwise designated or agreed by the parties, all documents made available for inspection prior to copying and production shall be presumed to have been marked ATTORNEYS EYES ONLY. No documents of the party or third party producing documents shall be removed from the site of the inspection or copied until such producing party or third party has had an opportunity to review and designate such documents in the manner previously explained. With regard to non-written material, such as recordings, magnetic media, photographs and things, the designation of any information as CONFIDENTIAL or ATTORNEYS EYES ONLY for purposes of this Protective Order shall be made by affixing a CONFIDENTIAL or ATTORNEYS EYES ONLY designation to the material, or a container for the material, in any suitable manner at the time of copying (if any). 4. Designation of Depositions. Deposition or other oral testimony given in this

case may be designated as CONFIDENTIAL or ATTORNEYS EYES ONLY by any party or third party either (a) during the deposition or proceeding during which the testimony is given, or (b) by written notice to the court reporter and to all counsel of record, within five (5) days after the court reporter has provided notice to the prospective designating party that the transcript of the deposition or proceeding is available. Unless otherwise ordered by the Court, pending the expiration of this five (5) day period, all parties and persons shall treat the testimony as if it has been designated ATTORNEYS EYES ONLY. Unless otherwise
CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

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ordered by the Court, the designating party shall have the right to have all persons, except the witness, his or her counsel, the court reporter, and such other persons authorized to receive the designating party's Proprietary Information pursuant to this Protective Order, excluded from a deposition or proceeding, or any portion thereof, before the taking therein of testimony that has been so designated. The court reporter shall mark the cover of the original and all copies of the transcript or the portion of the transcript containing testimony designated as either CONFIDENTIAL or ATTORNEYS EYES ONLY with the appropriate legend. 5. Belated Designation. Notwithstanding the obligations to timely designate

Proprietary Information under the foregoing paragraphs 3 and 4, nothing contained herein shall preclude a party or a third party from later changing that designation and notifying the other parties in writing of that change; provided, however, that it shall not be deemed a breach of this Order for any action to have been taken by a party or its counsel with respect to such information consistent with the original designation of such information prior to receipt of such notice. A party receiving such written notice shall make every reasonable effort to retrieve any such materials from persons not authorized to receive them pursuant to this Protective Order and to avoid any further unauthorized disclosure. Any party that changes the designation of any materials under this Order shall timely provide the other parties to this action with new copies of the materials with the new designation(s). 6. litigation. 7. Access to CONFIDENTIAL and ATTORNEYS EYES ONLY Materials. Non-use. All Proprietary Information shall be used only for purposes of this

Materials designated CONFIDENTIAL shall not be disclosed to any person except: a. the Court and its officers and staff;

CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

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b.

outside counsel of record in this action for each party (i.e., counsel of record

for a party who is not an employee of the party or its affiliates) and employees of such outside counsel; c. outside experts who are not regularly employed by a party and who have been

expressly retained to assist a party's counsel in the prosecution or defense of the litigation, and the secretarial, technical and clerical staff of such experts, provided that such experts have been approved pursuant to paragraph 8 hereof; d. current or former employees of the disclosing party during the deposition of

such employees or during examination of such employees at trial; e. any party or non-party who authored, received, or reviewed the material prior

to its production in the litigation; f. two representatives of Avocent Redmond Corp. and two representatives of

each of the defendants (Rose Electronics, Peter Macourek, Darioush "David" Rahvar, Aten Technology Inc., Aten International Co., Ltd., Trippe Manufacturing Company, and Belkin Corporation) that are identified to opposing counsel, and necessary secretarial personnel of those individuals, provided that each such person has first signed a written statement under oath in the form attached as Exhibit A hereto, and a copy of that statement has been provided to opposing counsel; g. court reporters and videographers, solely for the purpose of transcribing and/or

recording testimony in the litigation; h. independent litigation support services personnel, including copying services,

imaging and coding services, trial exhibit preparation services, solely for the purpose of assisting a party with the litigation; i. trial consultants, jury consultants, and mock jurors, focus group members and

the like selected by trial consultants, jury consultants or by counsel in preparation for trial;
CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

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provided that such persons have executed a confidentiality agreement in the form of Exhibit A and such agreement shall be kept by counsel for reference; and j. other persons as ordered by the Court or agreed to in writing or on the record

by the parties, provided that each such person has first signed a written statement under oath in the form attached as Exhibit A hereto, and a copy of that statement has been provided to opposing counsel. Proprietary Information designated as ATTORNEYS EYES ONLY can be disclosed to those persons designated in ¶¶ 7(a)-7(e) and 7(g)-7(j) provided, however, that any person who receives access to such information shall have no involvement whatsoever, from and after the date of first disclosure of any such information to such person, in the prosecution of any patent application that involves KVM switch technology for a period of one year after the conclusion of this litigation (including the exhaustion of all subsequent appeals). Patent prosecution shall include drafting, reviewing, editing, or supervising the drafting or preparation of patent applications, claims, specifications, amendments, responses to office actions and any other materials submitted to the United States Patent & Trademark Office or any other patent authority elsewhere in the world, as well as identifying or evaluating potential inventions, participating in the decision to file patent applications or consulting on any of the foregoing matters with others performing any of these activities. This Protective Order has no effect upon and shall not apply to (1) any party's use of its own Proprietary Information for any purpose, or (2) any party's use of documents or other information developed or obtained independently of discovery in this action for any purpose. Nothing herein shall bar or otherwise restrict an attorney, who is a qualified recipient under the terms of paragraph 7(b) of this Protective Order, from rendering advice to his or her client with respect to this action, and in the course thereof, from generally relying upon his or her examination of Proprietary Information. In rendering such advice or in other
CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

[PROPOSED] PROTECTIVE ORDER - 9

(NO. C06-1711 MJP)

1001 Fourth Avenue, Suite 3900 Seattle, Washington 98154-1051 Tel (206) 625-8600 Fax (206) 625-0900

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communications with the client, the attorney shall not disclose any Proprietary Information of another party or third party where such disclosure would not otherwise be permitted under the terms of this Protective Order. 8. Approval of Experts. A party seeking to disclose another party's Proprietary

Information to an outside expert shall serve such other party with a copy of the Undertaking attached hereto as "Exhibit A" signed by the expert, along with the expert's current resume, identifying (by employer and position) all past and current employment relating to his or her field of expertise, including employment as a consultant. The party receiving such Undertaking and resume shall have ten (10) calendar days after such service within which to object to such disclosure. Failure to object within this period shall be deemed approval. If the parties are unable to reach agreement within ten (10) days after service of an objection, the party objecting to disclosure to an expert shall raise its objection with the Court within fifteen (15) calendar days of such service of the objection. Failure to raise such objection with the Court within this period shall be deemed approval. Any party objecting to disclosure to an expert under this Protective Order shall bear the burden of proving that it will be harmed by such disclosure and that the protections of this Order are insufficient to reasonably protect such parties' proprietary interests. 9. Filing Proprietary Information. All papers, documents and transcripts

containing or revealing the substance of Proprietary Information shall be filed under seal through the Court's CM/ECF system. Without prior written order of this Court, the Clerk of the Court shall not permit access to materials filed under seal to anyone other than counsel for the parties. 10. Inadvertent Disclosure of Privileged or Immune Materials. Federal Rule of

Civil Procedure 26(b)(5)(B) governs the inadvertent or mistaken production of information that is subject to a claim of privilege or of protection as trial-preparation material. The
CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

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1001 Fourth Avenue, Suite 3900 Seattle, Washington 98154-1051 Tel (206) 625-8600 Fax (206) 625-0900

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inadvertent disclosure of information that is privileged or otherwise immune from discovery shall not, by itself, constitute a waiver of the privilege or immunity. 11. Disclosure of Proprietary Information to Unauthorized Person(s). If

Proprietary Information is disclosed to any person other than those authorized to receive such information by this Order, the party responsible for the disclosure shall immediately inform the designating party of all pertinent facts relating to such disclosure and shall make every reasonable effort to prevent disclosure by each unauthorized person who received such information and to obtain the return of such information. 12. Conclusion of the Litigation. Within ninety (90) days after entry of a final

judgment or dismissal with prejudice in this litigation (including appeals or petitions for review) finally disposing of all issues raised in this litigation, counsel for the parties and all other persons having possession, custody or control of another party's or third party's Proprietary Information shall: (a) destroy all Proprietary Information and any copies thereof, or (b) if requested by the producing party, return all Proprietary Information and any copies thereof to the producing party. Notwithstanding paragraph 12(b), a receiving party shall destroy all Proprietary Information of another party or third party containing or contained in any notes, summaries, digest, synopses or other documents created by or on behalf of the receiving party. Counsel for each party shall give a written certification to counsel for all other parties that all of the producing party's Proprietary Information has either been destroyed or returned pursuant to this paragraph. If requested, counsel shall also provide the opposing party with the originals of all Undertaking forms executed by experts pursuant to paragraph 8. Notwithstanding the foregoing paragraph, outside counsel may retain (a) copies of the pleadings and other Court filings, (b) copies of the deposition, hearing, and trial transcripts and any related exhibits, and (c) one file copy of all materials produced in this litigation that
CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

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are specifically referred to in an expert report, a motion, pleading or other paper filed with the Court. 13. Contested Designations. The parties shall use reasonable care to avoid

designating as CONFIDENTIAL or ATTORNEYS EYES ONLY any documents or information that has been published or otherwise entered the public domain. A party shall not be obligated to challenge the propriety of any other party's designation of materials or information as Proprietary Information at the time such designation is made, and failure promptly to challenge the designation shall not preclude a subsequent challenge thereto. In the event that a party disagrees at any stage of these proceedings with the designation of any information as CONFIDENTIAL or ATTORNEYS EYES ONLY, the parties shall try first to resolve such dispute in good faith on an informal basis. If the dispute cannot be resolved, the objecting party may seek appropriate relief from this Court. The party asserting that the material is entitled to confidential treatment shall have the burden of proof. All Proprietary Information shall remain under the protection of this Order until otherwise ordered by the Court. 14. Trial Procedures. A party may request that the Court implement appropriate

procedures to protect Proprietary Information that may be disclosed at the trial or any hearing in this matter consistent with the spirit and scope of this Order. 15. Modification. Stipulations may be made between counsel for the respective

parties as to the application of this Order to specific situations provided that such stipulations are recorded in writing or contained in the record of any oral proceeding. Nothing contained herein shall preclude any party from seeking an order of the Court modifying or supplementing this Order. 16. Interim Effect. This Protective Order shall be submitted to the Court for

approval and, following approval, shall continue in effect until further order of this Court.
CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

[PROPOSED] PROTECTIVE ORDER - 12

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For the purpose of proceeding with discovery without delay, pending the Court's approval of this Order, any Proprietary Information produced under the terms of this Order shall be protected by the parties pursuant to these terms. DATED this _______ day of ____________, 2007.

HONORABLE MARSHA J. PECHMAN UNITED STATES DISTRICT COURT JUDGE

CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP

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EXHIBIT A

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THE HONORABLE MARSHA J. PECHMAN 1 2 3 4 5 6 7 8 9 10 Plaintiff, 11 12 13 14 15 16 17 18 19 20 21 22 23 24 1. My address is _____________________________________________. My current I, ___________________________________, hereby declare as follows: v. ROSE ELECTRONICS, a Texas general partnership; PETER MACOUREK, an individual; DARIOUSH "DAVID" RAHVAR, an individual; ATEN TECHNOLOGY INC., a California corporation; ATEN INTERNATIONAL CO., LTD., a Taiwanese Company; TRIPPE MANUFACTURING COMPANY, an Illinois corporation; and BELKIN CORPORATION, a Delaware corporation, Defendants. UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE AVOCENT REDMOND CORP., a Washington corporation,

NO. C06-1711-MJP

UNDERTAKING AND CONSENT TO BE BOUND BY PROTECTIVE ORDER

employer is ____________________________________. My current occupation is __________________________________.

UNDERTAKING AND CONSENT TO BE BOUND BY PROTECTIVE ORDER - Page 1

CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP
1001 Fourth Avenue, Suite 3900 Seattle, Washington 98154-1051 Tel (206) 625-8600 Fax (206) 625-0900

(NO. C06-1711 MJP)

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2. 1 2 3 4 5 6

I have received a copy of the Confidentiality Stipulation and Protective Order entered in

the above-captioned action (the "Protective Order"). I have carefully read and understand the provisions of the Protective Order. 3. I will comply with all the provisions of the Protective Order. I will hold in confidence,

will not disclose to anyone not qualified under the Protective Order, and will use only for purposes of this action any Proprietary Information that is disclosed to me.

7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 __________________________________________ (Printed Name) Dated: ____________________ __________________________________________ (Signature) I declare under penalty of perjury that the foregoing is true and correct. 5. I hereby submit to the jurisdiction of this Court for the purpose of enforcement of the 4. Promptly upon termination of this action, I will return all Proprietary Information that

came into my possession, and all documents and things that I have prepared relating thereto, to counsel for the party by whom I am employed or retained.

Protective Order in this action. 6. I understand that this Undertaking and the Protective Order are enforceable after the

termination of this action.

UNDERTAKING AND CONSENT TO BE BOUND BY PROTECTIVE ORDER - Page 2

CORR CRONIN MICHELSON BAUMGARDNER & PREECE LLP
1001 Fourth Avenue, Suite 3900 Seattle, Washington 98154-1051 Tel (206) 625-8600 Fax (206) 625-0900

(NO. C06-1711 MJP)
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Exhibit 2

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DEFENDANTS' OPPOSITION TO AVOCENT'S MOTION FOR ENTRY OF A PROTECTIVE ORDER No. 06-1711 MJP

THE HONORABLE MARSHA J. PECHMAN

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE

AVOCENT REDMOND CORP., a Washington corporation, Plaintiff, v. ROSE ELECTRONICS, a Texas general partnership; PETER MACOUREK, an individual; DARIOUSH "DAVID" RAHVAR, an individual; ATEN TECHNOLOGY INC., a California corporation; ATEN INTERNATIONAL CO., LTD., a Taiwanese Company; TRIPPE MANUFACTURING COMPANY, an Illinois corporation; and BELKIN CORPORATION, a Delaware corporation, Defendants.

Case No. 2:06-CV-01711-MJP DEFENDANTS' OPPOSITION TO AVOCENT'S MOTION FOR ENTRY OF PLAINTIFF'S PROTECTIVE ORDER AND CROSS-MOTION FOR ENTRY OF DEFENDANTS' PROTECTIVE ORDER

MOTION: Note on Motion Calendar: April 19, 2007 CROSS-MOTION: Note on Motion Calendar: April 25, 2007

O'MELVENY & MYERS LLP 400 S. HOPE STREET LOS ANGELES, CA 90071-2899 TEL: (213) 430-6000 FAX: (213) 430-6407

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 V. IV. III. I. II.

TABLE OF CONTENTS Page INTRODUCTION.......................................................................................... 1 DEFENDANTS' PROPOSED PATENT PROSECUTION PROHIBITION WILL PROTECT DEFENDANTS' HIGHLYSENSITIVE TECHNICAL INFORMATION FROM INADVERTENT MISUSE WITHOUT SUBJECTING AVOCENT TO ANY UNDUE HARDSHIP. .................................................................... 1 A. Avocent's Patent Prosecution Counsel Should Not Be Allowed Unfettered Access to Defendants' Accused Product Designs to Prevent Inadvertent Use of This Information in Avocent's Future Patent Applications................................................. 2 B. Avocent Will Suffer No Hardship Because Defendants' Patent Prosecution Prohibition Does Not Disqualify Avocent's Patent Litigation Counsel at Davidson Berquist. ........................................... 8 AVOCENT'S OVERBROAD EXCLUSIONS WOULD PREVENT PROPER "ATTORNEYS EYES ONLY" DESIGNATIONS. .................... 10 THE DEADLINE FOR DESIGNATING TRANSCRIPTS SHOULD BE MEASURED FROM WHEN THE REPORTER NOTIFIES THE PARTIES OF THE TRANSCRIPTS' AVAILABILITY. ........................... 12 CONCLUSION. ........................................................................................... 12

DEFENDANTS' OPPOSITION TO AVOCENT'S MOTION FOR ENTRY OF A PROTECTIVE ORDER No. 06-1711 MJP

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TABLE OF AUTHORITIES Page

FEDERAL CASES Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992) ............................................................................................................ 1, 2, 4 Chan v. Intuit, Inc., 218 F.R.D. 659 (N.D. Cal. 2003) .................................. 2, 6, 7, 8 Cummings-Allison Corp. v. Glory Ltd., 2003 U.S. Dist. LEXIS 23653, *39 (N.D. Ill. 2003)...................................................................... 2, 6, 7, 8 Federal Trade Comm'n v. Exxon Corp., 636 F.2d 1336 (D.C. Cir. 1980) .................................................................................................................... 2 In Re Papst Licensing, 2000 U.S. Dist. LEXIS 6374, *12 (E.D. La. 2000) .................................................................................................... 2, 5, 6, 7, 8 Interactive Coupon Marketing Group, Inc. v. H.O.T! Coupons, LLC, 1999 U.S. Dist. LEXIS 12437, *11 (N.D. Ill. 1999) ............................... 2, 6, 7, 8 Mikohn Gaming Corp. v. Acres Gaming, Inc., 1998 U.S. Dist. LEXIS 22251, *15 (D. Nev. 1998) ......................................................................... passim Motorola, Inc. v. Interdigital Tech. Corp., 1994 U.S. Dist. LEXIS 20714, *19 (D. Del. 1994) ................................................................... 2, 4, 5, 7, 8 U.S. Steel Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984)................... 2, 3, 4 FEDERAL STATUTES 35 U.S.C. § 120 ......................................................................................................... 3 STATE STATUTES Wash. Rev. Code § 19.108.010 ............................................................................... 11

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I.

INTRODUCTION

Avocent prematurely and unexpectedly terminated the parties' meet and confer process over a protective order by filing the present motion. The first round of negotiations allowed the parties to narrow the scope of the disputes to the following discrete issues, which Avocent has now brought before the court: 1) Whether Avocent may provide its patent prosecution counsel with unfettered access to Defendants' highly-sensitive accused product designs (highly-sensitive circuit schematics, software source code, circuit board layouts, etc.) even though Avocent continues to prosecute new patent applications that directly descend from the asserted patents; 2) Whether Avocent can exclude particular categories of technical, financial, and marketing information pertaining to current products from the higher "Attorneys Eyes Only" designation of confidentiality, depriving the parties of an opportunity to assess whether that level of protection is appropriate on a case-by-case basis; and 3) Whether the parties should be required to designate transcripts under the protective order within 5 days of the transcript's being merely "available" from the court reporter, or whether the court reporter must first apprise the parties of that availability to ensure that the five day period does not pass without the parties' knowledge. The issues at stake in this motion involve information that is competitively important and where the risk of misuse is great. Defendants' proposals mitigate the risk at no significant burden or prejudice to Avocent.

II.

DEFENDANTS' PROPOSED PATENT PROSECUTION PROHIBITION WILL PROTECT DEFENDANTS' HIGHLY-SENSITIVE TECHNICAL INFORMATION FROM INADVERTENT MISUSE WITHOUT SUBJECTING AVOCENT TO ANY UNDUE HARDSHIP.

A court must balance the risk of "inadvertent disclosure of trade secrets to competitors" against the risk of impairing a party's ability to litigate its claims. See Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). "Inadvertence, like the thief-in-the-night, is no respecter of its victims. Inadvertent or accidental disclosure may or may not be predictable. To the extent that it may be predicted, and cannot be adequately forestalled in the design of a
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protective order, it may be a factor in the access decision." U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984). While neither the Brown Bag Software nor U.S. Steel courts were confronted with the complex issue of patent prosecution counsel's access to highly-sensitive accused product design information, the vast majority of districts courts subsequently confronting this issue have entered protective orders with patent prosecution prohibitions, rigorously applying the analyses of the Brown Bag Software and U.S. Steel decisions. See e.g., Cummings-Allison Corp. v. Glory Ltd., 2003 U.S. Dist. LEXIS 23653, *39 (N.D. Ill. 2003); Chan v. Intuit, Inc., 218 F.R.D. 659, 662 (N.D. Cal. 2003); In Re Papst Licensing, 2000 U.S. Dist. LEXIS 6374, *12 (E.D. La. 2000); Interactive Coupon Marketing Group, Inc. v. H.O.T! Coupons, LLC, 1999 U.S. Dist. LEXIS 12437, *11 (N.D. Ill. 1999); Mikohn Gaming Corp. v. Acres Gaming, Inc., 1998 U.S. Dist. LEXIS 22251, *15 (D. Nev. 1998); Motorola, Inc. v. Interdigital Tech. Corp., 1994 U.S. Dist. LEXIS 20714, *19 (D. Del. 1994).

A.

Avocent's Patent Prosecution Counsel Should Not Be Allowed Unfettered Access to Defendants' Accused Product Designs to Prevent Inadvertent Use of This Information in Avocent's Future Patent Applications.

Courts routinely enter protective orders that impose patent prosecution prohibitions on those who receive access to an adversary's highly-sensitive technical information. See id. Patent prosecution prohibitions are not intended to impugn any person's integrity, but rather, they are prophylactic in nature and recognize the inherent difficulty of compartmentalizing one's knowledge and "the risk of inadvertent disclosure and misuse" of confidential information in patent prosecution activities. See Chan, 218 F.R.D. at 662 (The court entered a protective order with a patent prosecution prohibition, recognizing the inherent difficulty of counsel to "compartmentalize the information so that it does not inform counsel's decisions pertaining to those future patent prosecutions."); Federal Trade Comm'n v. Exxon Corp., 636 F.2d 1336, 1350 (D.C. Cir. 1980) ("[I]t is very difficult for the human mind to compartmentalize and selectively suppress information once learned, no matter how well-intentioned the effort may be to do so.") "Even if the competitor's counsel acted in the best of faith and in accordance with the highest ethical standards, the question remains whether access to the moving party's confidential
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information would create `an unacceptable opportunity for inadvertent disclosure.'" Mikohn Gaming Corp., 1998 U.S. Dist. LEXIS 22251 at *7 (quoting U.S. Steel Corp., 730 F.2d at 1468). This risk is especially acute in this case where Avocent's patent prosecution counsel reside at the same firm as its patent litigation counsel and are involved in the prosecution of patents directly related to the asserted patents. As illustrated in Exhibit 1, the asserted patents (shown in bold) are members of a broader Avocent KVM switch patent family. See Declaration of Michael Moore, ¶ 2, Ex. 1. As the patent family tree indicates, each patent in the family descends and claims priority to the original patent application filed on August 25, 1995, which issued as U.S. Patent 5,721,842. Id. By this claim of priority, Avocent has requested that each of its patents be treated as if it were filed on August 25, 1995. See 35 U.S.C. § 120 ("An application for patent for an invention . . . which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application." (emphasis added).) Thus, each new patent that Avocent files in this family may be treated as if it were filed on August 25, 1995. The Davidson Berquist Jackson & Gowdey LLP firm ("Davidson Berquist") represented Avocent in the prosecution of its most recently issued asserted patent -- U.S. 7,113,978 -- which issued on September 26, 2006. See Moore Decl., ¶ 3, Ex. 2. Obviously, Michael Casey, the patent prosecutor at Davidson Berquist primarily responsible for the prosecution of the '978 Patent, who has not filed an appearance in this case, has a duty to zealously represent Avocent's interests in filing and prosecuting all currently pending and future patent applications, including those related to the Avocent KVM switch patent family. It would appear to be a Herculean task for Mr. Casey, or any other patent prosecutor, to be expected to review Defendants' highlysensitive KVM switch design documentation and continue to amend or draft new patent claims without inadvertently incorporating any aspect of Defendants' highly-sensitive technical
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information into these claims. In many respects, Defendants' technical information reveals a timeline of Defendants' product development history and a roadmap to its future product releases. As shown in Exhibit 1, Avocent continues to prosecute Patent Application Serial No. 11/129,443 before the United States Patent & Trademark Office ("PTO"), which is a continuation application of the Avocent KVM switch patent family that claims priority to the original patent application filed on August 25, 1995. See Moore Decl., ¶ 4, Ex. 3. The existence of this continuation patent application provides Avocent with the opportunity to file a virtually unlimited number of additional patent applications that claim priority to the original application filed on August 25, 1995 for approximately the next 8 years. If any of these patents were to issue, Avocent would have the opportunity to assert these patents against Defendants' products in future litigation with potentially devastating consequences to Defendants' businesses. Allowing Avocent's patent prosecution counsel access to Defendants' accused product designs (highly-sensitive circuit schematics, software source code, circuit board layouts, etc.) creates an unnecessary risk that such information will inadvertently influence Avocent's patent prosecution counsel in drafting new patent claims in currently pending or new patent applications. If any of these patents were to issue with a priority date of August 25, 1995, which may pre-date certain of Defendants' product designs, then the consequences to Defendants' businesses would be catastrophic. The recognition of this potential harm has led the majority of courts, applying the analyses of Brown Bag Software and U.S. Steel, to enter protective orders with patent prosecution prohibitions nearly identical in scope to that proposed by Defendants. The following cases provide examples of the abundant case law supporting Defendants' request: In Motorola, the court found it necessary to amend the protective order with a patent prosecution prohibition upon discovery that the plaintiff's attorneys had begun prosecuting patent applications related to the asserted patents. The issue, as properly framed by the court, was not one of counsel's "ethics" or "deliberate disclosure," but instead one of risk of "inadvertent disclosure." The Motorola court held:

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DS&M is currently prosecuting applications relating to the very patents at issue in this litigation. Attorneys who were to view Motorola's voluminous confidential information and then later prosecute the patents would have to constantly challenge the origin of every idea, every spark of genius. This would be a sisyphean task, for as soon as one idea would be stamped `untainted,' another would come to mind. The level of introspection that would be required is simply too much to expect, no matter how intelligent, dedicated, or ethical the DS&M attorneys may be. Motorola, Inc., 1994 U.S. Dist. LEXIS 20714 at *14 (emphasis added). The court amended the existing protective order to provide that any patent prosecuting attorneys who received access to Motorola's confidential information "shall not prosecute any InterDigital Technology Corporation patent applications relating to the broad subject matter of the patents in suit during the pendency of this case and until one year after the conclusion of the present litigation, including appeals." Id. at 19. In Mikohn Gaming, the court held that counsel's dual role as trial and patent prosecution counsel created an unacceptable risk of inadvertent disclosure of confidential information. See Mikohn Gaming Corp., 1998 U.S. Dist. LEXIS 22251 at *15. Because the court determined that the patent prosecution activities related to the asserted patents, the court determined that counsel's patent prosecution activities were "intensely competitive" in nature and that the risk of inadvertent disclosure outweighed the impairment of the other party's ability to litigate. Id. at *11. The court reasoned: "No matter how much good faith [Acres' prosecution attorney] might exercise, it is unrealistic to expect that his knowledge of Mikohn's secret technology would not or could not influence the nature of his advice to Acres. This is so whether the advice relates to a pending application or a future application." Id. In Papst, the court adopted a protective order in the context of multi-district litigation that restricted the patentee's counsel with access to the other parties' confidential material from prosecuting, supervising, or assisting in the prosecution of any patent application on behalf of the inventor or patent owner. See In re Papst Licensing, 2000 U.S. Dist. LEXIS 6374 at*15. The court reasoned:

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The risk of inadvertent disclosure of the Non-Papst parties' confidential information clearly outweighs the impairment, if any, of the Papst parties' ability to litigate this action. Despite the Papst parties' arguments to the contrary, it is clear that the advice and participation of the Papst parties' counsel in preparation and prosecution of patent applications related to the patents in suit is an intensely competitive decisionmaking activity and would be informed by access to the Non-Papst parties confidential information. Counsel's ability to file new claims in existing and pending patents based on the confidential information discovered during the course of this litigation poses an unacceptable opportunity for inadvertent disclosure and misuse. Id. at *4 (emphasis added). The court entered a protective order with a patent prosecution provision that provided that counsel "shall not prosecute, supervise or assist in the prosecution of any patent application on behalf of [the Papst entities] pertaining to the subject matter of the patents in suit during the pendency of this case and for one year after the conclusion of this litigation, including any appeals." Id. at *2. In Interactive Coupon Marketing Group, the court entered a protective order with a patent prosecution restriction providing that litigation counsel "who are privy to confidential information obtained from defendant in discovery shall not participate in the prosecution of any patent application for plaintiff relating to the subject matter of the patents in suit during the pendency of this case and for one year after the conclusion of this litigation, including appeals." Interactive Coupon Marketing Group, Inc., 1999 U.S. Dist. LEXIS 12437 at *11. "The concern is whether the firm's involvement in developing a patent prosecution strategy will be informed by such information to the competitors' detriment." Id. at *9. In Chan, the court entered a protective order with a patent prosecution provision that prohibited "advice related to patent prosecution" and "advice on the scope of patent claims." See Chan, 218 F.R.D. at 661-662. "The Court finds that if advice related to patent prosecution is defined as competitive decision-making, as it clearly is in the Papst decision, then advice on the scope of patent claims must also be defined as competitive decision-making." Id. The court's protective order stated that "counsel who view confidential information shall be restricted from patenting for a party for the pendency of the trial and for two years after its conclusion." Id. (emphasis added).
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In Cummins-Allison Corp., the court criticized the MedImmune analysis on which Avocent relies, stating "the MedImmune court fails to come to grips with the role of a patent prosecutor in shaping the way in which a patent application is written, or how role [sic] of the patent prosecutor, when combined with the knowledge of a competitor's confidential information gained through the litigation process, creates a risk of inadvertent use of that information to advance a client's patent prosecution." Cummings-Allison Corp., 2003 U.S. Dist. LEXIS 23653 at *25-*26. The court entered a protective order with a patent prosecution prohibition, reasoning: We would expect patent prosecution counsel to be intimately involved in deciding how to shape the original application, or how later to revise it. It is that intimate involvement in the shaping and revision of patent applications that provides for the risk that patent counsel inadvertently will use information obtained from a party in patent litigation in shaping the application. As the Motorola court quite properly observed, this is not a criticism of the ethics of any particular attorneys or of the bar in general. Rather, it is a recognition of the limits of human beings to completely compartmentalize the multiple sources from which they obtain information. Id. at 23 (emphasis added). The Motorola, Mikohn Gaming, Papst, Interactive Coupon Marketing, Chan, and CumminsAllison Corp. decisions are squarely on point with the present case , and the Court should adopt Defendants' patent prosecution prohibition to prevent Avocent's counsel allowed access to Defendants' highly-sensitive KVM switch design information to assist in the prosecution of any patent applications relating to the subject matter of this litigation, including continuation patent applications related to the asserted patents, for a reasonable period of time after the conclusion of this litigation. Of critical concern to the Motorola, Mikohn Gaming, Papst, Interactive Coupon Marketing, Chan, and Cummins-Allison Corp. courts was preventing access by patent prosecution counsel tasked with prosecuting the patents-in-suit or related patents, which is the main concern here. As these courts properly recognized, Defendants' patent prosecution prohibition is not intended to impugn the ethics of Avocent's counsel, but instead to mitigate the overwhelming potential harm of inadvertent misuse of Defendants' highly-sensitive KVM switch design information in Avocent's patents.
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B.

Avocent Will Suffer No Hardship Because Defendants' Patent Prosecution Prohibition Does Not Disqualify Avocent's Patent Litigation Counsel at Davidson Berquist.

Similar to the provisions adopted by the Motorola, Mikohn Gaming, Papst, Interactive Coupon Marketing, Chan, and Cummins-Allison Corp. courts, Defendants' patent prosecution prohibition states: Proprietary Information designated as ATTORNEYS EYES ONLY can be disclosed to those persons designated in ¶¶ 7(a)-7(e) and 7(g)-7(j) provided, however, that any person who received access to such information shall have no involvement whatsoever, from and after the date of first disclosure of any such information to such person, in the prosecution of any patent application that involves KVM switch technology for a period of one year after the conclusion of this litigation (including the exhaustion of all subsequent appeals). Patent prosecution shall include drafting, reviewing, editing, supervising the drafting or preparation of patent applications, claims, specifications, amendments, responses to office actions and any other materials submitted to the United States Patent & Trademark Office or any other patent authority elsewhere in the world, as well as identifying or evaluating potential inventions, participating in the decision to file patent applications or consulting on any of the foregoing matters with others performing any of these activities. See Moore Decl., ¶ 5-6, Ex. 4 (redline of Avocent's proposed protective orders with Defendants' proposed revisions) and Ex. 5 (Defendants' proposed protective order). This provision is narrowly tailored because it only applies to counsel with access to Attorneys Eyes Only ("AEO") information, but not to any other proprietary information designated as Confidential Information by the parties under the Protective Order. Defendants also attempted to provide a clear definition of the activities that constitute "patent prosecution" to assist anyone reviewing this provision, but it is similar in scope and duration to those provisions adopted by the Motorola, Mikohn Gaming, Papst, Interactive Coupon Marketing, Chan, and Cummins-Allison Corp. courts. Defendants also note that any of the patent prosecution prohibitions entered by these courts would also be acceptable, if the Court were so inclined to use another precedent. By its argument of undue hardship, it is clear that Avocent completely misinterprets the language of Defendants' patent prosecution prohibition. This provision does not provide a firmwide ban on patent prosecution activities at Davidson Berquist if Messrs. Berquist, Davidson, and Jackson view Defendants' accused product design documents designated as AEO information.
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Instead, it is narrowly focused to apply on an attorney-by-attorney basis, and it is solely intended to prevent Avocent's patent prosecution counsel at Davidson Berquist, as well as other firms, from receiving access to Defendants' highly-sensitive KVM switch design information produced to Avocent's patent litigation counsel at Davidson Berquist and then continuing to prosecute Avocent's KVM switch patent applications. Defendants' patent prosecution prohibition does not place any undue burden on Messrs. Berquist, Davidson, and Jackson of Davidson Berquist, who appeared on behalf of Avocent in its prior litigation against Raritan Computer, Inc., and who appear on behalf of Avocent in the present litigation. At the Court's recent case management hearing, Mr. Jackson stated that neither he, nor Mr. Berquist, nor Mr. Davidson were involved in the prosecution of any of the asserted patents when addressing the number of people that would be deposed in connection with the parties' Initial Disclosures. If Messrs. Berquist, Davidson, and Jackson have not been involved in the prosecution of any of the patents shown in Exhibit 1 -- activities which have been on-going since August 25, 1995 -- then presumably Avocent will not require their assistance in the prosecution of any Avocent continuation applications related to the asserted patents during the pendency of this litigation plus one year. Rather, Defendants' patent prosecution prohibition is intended to prevent Avocent's patent prosecution counsel, such as Mr. Casey at Davidson Berquist, from obtaining unfair access to Defendants' highly-sensitive KVM switch design information while continuing to prosecute applications related to the asserted patents. It is Mr. Casey and any other Avocent patent prosecution counsel who Defendants believe should not be placed in the untenable position of reviewing Defendants' accused product design information while upholding their duties to vigorously prosecute continuation applications to Avocent's asserted patents. Finally, Avocent fails to address in its motion why it is necessary for any of its patent prosecutors to have access to Defendants' highly-sensitive accused product design information when it is represented in the present case by the three Davidson Berquist attorneys who litigated the asserted patents in the Raritan Computers, Inc. case from May 2001 until the parties settled in
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late-2005 or early-2006. These litigation attorneys represented Avocent in the assertion of two of the patents-in-suit against Raritan Computers, Inc., for over four years, through two claim construction hearings, through dispositive motions, through an appeal to the Federal Circuit, and up to the courthouse steps in the trial after appeal. Avocent provides no reason in its moving papers why its patent prosecution counsel, who were not named as trial counsel in the Raritan Computers, Inc. case are now suddenly necessary to litigate its asserted patents against the Defendants.

III.

AVOCENT'S OVERBROAD EXCLUSIONS WOULD PREVENT PROPER "ATTORNEYS EYES ONLY" DESIGNATIONS.

The second disputed issue raised in Avocent's motion (see Avocent Motion at p. 9) relates to the definition of "Attorneys Eyes Only" information. Both protective orders proposed by the parties provide that proprietary information can be designated under one of two confidentiality levels: the lower tier of "Confidential," and the higher tier of "Attorneys Eyes Only." The dispute relates to defining what information is properly designated at the higher level. Avocent's proposed definition includes the plain text in the following, with the Defendants' proposed additions and deletions to Avocent's proposal indicated in bold text: Proprietary Information relating to highly sensitive financial information, including but not limited to, customer identification, sales and cost information, sales prices to specific customers, profit margins, trends, projections, current and prospective marketing strategies, or other highly sensitive financial information not yet publicly disclosed, and highly sensitive technical information, including but not limited to, product design and development materials relating to products not yet for sale or released to the public, schematics, gerber files, layouts, source code, CAD drawings, specifications, or other highly sensitive, trade secret technical information not yet publicly disclosed, may be designated as ATTORNEYS EYES ONLY. In its motion, Avocent describes its proposal as "relatively limited," while characterizing Defendants' proposal as "overly broad." What Avocent fails to recognize, however, is that the scope of these two provisions is identical. Both proposals provide that "highly sensitive" financial and technical information can be designated as Attorneys Eyes Only, and both then list examples of information in those categories. In neither case, however, is the list of examples exclusive; each is prefaced with the language "including but not limited to," indicating that other unlisted
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information could also properly be designated Attorneys Eyes Only. Nevertheless, Avocent's reasoning for attempting to exclude the examples in the Defendants' proposal is illogical. For example, Avocent objects to the Defendants' recitation of "sales and cost information" because it allegedly includes all types of such information, "regardless of its specificity." Avocent Motion at p. 9. In other words, based on a hypothetical concern that the parties might designate less detailed (and therefore allegedly less confidential) sales and cost information as Attorneys Eyes Only, Avocent would exclude all such information regardless of sensitivity or specificity. Avocent's attempted exclusion is too blunt an instrument; it does not permit the parties to make the proper case-by-case determination of confidentiality. Likewise, in opposing the recitation of "schematics, gerber files, layouts, ... CAD drawings, [and] specifications," Avocent's sole objection is that the language is broad enough to cover "virtually anything ..., provided the designating party was motivated to do so." Avocent Motion at p. 10. The enumerated documents are all specific in nature; they cannot reasonably be construed as broadly as Avocent contends. Further, both proposed protective orders include a mechanism in paragraph 13 to contest designations viewed as improper, so the parties are protected from abuse or overuse of the confidentiality designations. As to the remaining disputed examples, Avocent has not even attempted to defend its exclusion of "trends" and "projections," probably because that language was part of Avocent's own initial proposal to the Defendants. See Moore Decl., ¶ 7, Ex. 6 at ¶ 2. Likewise, Avocent's original proposal recited "marketing strategies," (id.) which Defendants again accepted without modification. Yet Avocent inexplicably limited its own language to "prospective marketing strategies" and then filed its motion. Avocent has not explained why current marketing strategies are any less deserving of protection that prospective ones, as its own original proposal recognized. Finally, Defendants' proposal removes Avocent's reference to "trade secret" technical information. The test for establishing a trade secret under Washington law (see Wash. Rev. Code § 19.108.010) includes elements that are not applied to the other types of Attorneys Eyes Only information recited in both parties' proposals. It is doubtful that Avocent intended to invoke the
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trade secret laws, but that is potentially the effect of its proposal. Having to apply those standards will lead to multiple unnecessary disputes. That language should be excluded. In short, the blanket exclusions advocated by Avocent (although not effectuated by its Proposed Order) are too broad and ensnare too much information of potentially high sensitivity. The better approach is to permit parties to make case-by-case determinations of confidentiality.

IV.

THE DEADLINE FOR DESIGNATING TRANSCRIPTS SHOULD BE MEASURED FROM WHEN THE REPORTER NOTIFIES THE PARTIES OF THE TRANSCRIPTS' AVAILABILITY.

The final dispute between the parties is a minor one, relating to the time limit for designating the confidentiality of deposition transcripts. Defendants believe the parties could have worked out this issue if Avocent had contacted Defendants before filing its motion. Avocent proposes that a party should have five days "after the transcript ... is available from the court reporter" within which to designate the transcript as confidential. Avocent's Proposed Protective Order at p. 3, ¶ 4. While the five day period is acceptable, a problem arises from measuring the start of that period from the day the transcript is "available." Avocent's counsel has indicated that a transcript is "available" on the date the reporter sends it to the parties by mail or email. However, if the reporter were to send the transcript by U.S. mail, the parties might not receive the transcript for several days, using up some or all of the allotted five day designation period. This is an unnecessary and wasteful result. As a compromise, Defendants propose that the five day period be measured from the day that the court reporter "has provided notice to th