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Case 1:08-cv-00069-LSM

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Application Number: Filing or 371 (c) Date: 11/129,443 05-16-2005 Customer Number: Status: Status Date: Location: Location Date: Earliest Publication No: Earliest Publication Date: Patent Number: Docketed New Case Ready for Examination 08-08-2006 ELECTRONIC US 2005-0232260 A1 10-20-2005 -

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Application Type: Utility Examiner Name: Group Art Unit: Confirmation Number: Attorney Docket Number: STRANGE, AARON N 2153 1720 2540-0844

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Class / Subclass: 709/203 First Named Inventor: Title of Invention: If you need help:

Danny Beasley , Mukilteo, Issue Date of WA Patent:

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Description This application is a Continuation of is a continuation of is a continuation of is a continuation of is a continuation of Parent Number 09/683,582 09/590,170 09/244,947 08/969,723 08/519,193 Parent Filing or 371(c) Date 01-22-2002 06-09-2000 02-04-1999 11-12-1997 08-25-1995 Parent Status Patented Patented Patented Patented Patented Patent Number 7,113,978 6,345,323 6,112,264 5,884,096 5,721,842

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Case 1:08-cv-00069-LSM

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Case 1:08-cv-00069-LSM

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Presidio Components, Inc. v. American Technical Ceramics Corp. S.D.Cal.,2008. Only the Westlaw citation is currently available. United States District Court,S.D. California. PRESIDIO COMPONENTS, INC., Plaintiff, v. AMERICAN TECHNICAL CERAMICS CORPORATION, Defendant. American Technical Ceramics Corporation, Counterclaimant, v. Presidio Components, Inc., Counterdefendants. Civil No. 07cv893 IEG (NLS). March 4, 2008. Background: Parties, which were evaluating settlement of patent infringement litigation, filed joint motion for a protective order governing the exchange of confidential information. Holdings: The District Court, Nita L. Stormes, United States Magistrate Judge, held that: (1) defendant's in-house counsel, who was vice president of defendant's corporate parent, would not be permitted access to information designated "Attorneys Eyes Only," and (2) plaintiff's patent prosecutors would be required to choose either litigate the patents at issue, or prosecute patents in the family of patents at issue, but not both. Motion granted. [1] Patents 291 292.3(2)

who was vice president of defendant's corporate parent, would not be permitted access to information designated "Attorneys Eyes Only;" in-house counsel was engaged in competitive decision-making for defendant's corporate parent, and plaintiff's risk of disclosure outweighed defendant's in-house counsel's need for confidential information. [2] Patents 291 292.3(2)

291 Patents 291XII Infringement 291XII(C) Suits in Equity 291k292 Discovery 291k292.3 Production of Documents and Other Matters 291k292.3(2) k. Subject Matter. Most Cited Cases When deciding whether one side's patent prosecutor should have access to the opposing party's confidential information, courts must balance the one party's right to broad discovery and the other party's ability to protect its confidential materials from misuse by competitors; key inquiry is whether the attorney in question is in fact a competitive decisionmaker. [3] Patents 291 292.3(2)

291 Patents 291XII Infringement 291XII(C) Suits in Equity 291k292 Discovery 291k292.3 Production of Documents and Other Matters 291k292.3(2) k. Subject Matter. Most Cited Cases Under terms of protective order governing the exchange of confidential information in patent infringement litigation, defendant's in-house counsel,

291 Patents 291XII Infringement 291XII(C) Suits in Equity 291k292 Discovery 291k292.3 Production of Documents and Other Matters 291k292.3(2) k. Subject Matter. Most Cited Cases Under terms of protective order governing the exchange of confidential information in patent infringement litigation, plaintiff's patent prosecutors would be required to choose either litigate the patents at issue, or prosecute patents in the family of patents at issue, but not both; plaintiff's counsel was engaged in competitive decision-making for plaintiff, defendant's risk of disclosure outweighed plaintiff's need to have its patent prosecutors access defendant's confidential information, there was some indicia that

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plaintiff was at risk of inadvertently misusing defendant's confidential information, and burden on plaintiff would be minimal if plaintiff's patent prosecutors were not allowed access to defendant's confidential information. Brett A. Schatz, Gregory F. Ahrens, Wood, Herron and Evans, Cincinnati, OH, Miles D. Grant, Grant and Zeko, San Diego, CA, for Plaintiff/Counterdefendants. Marvin S. Gittes, Nathan R. Hamler, Peter F. Snell, Richard M. Lehrer, Timur E. Slonim, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC, New York, NY, for Defendant. ORDER GRANTING PARTIES' JOINT MOTIONS FOR (1) A PROTECTIVE ORDER [Doc. No. 31]; and (2) FOR LEAVE TO FILE EXCESS PAGES IN SUPPORT OF JOINT MOTION FOR PROTECTIVE ORDER [Doc. No. 32] NITA L. STORMES, United States Magistrate Judge. *1 Plaintiff/Counterdefendant Presidio Components, Inc. (Presidio) and Defendant/Counterclaimant American Technical Ceramics Corporation (ATC) have been negotiating the terms of a stipulated protective order in this case that will govern the exchange of confidential information. While they agree on most of the terms in the proposed protective order, they disagree on two issues: (1) whether ATC's in-house general counsel Evan Slavitt, Esq. may access Presidio's Attorneys Eyes Only information (paragraph 8(c)); and (2) whether outside counsel for Presidio who receive Attorneys Eyes Only information should be barred from any involvement in patent prosecution in the field of multilayer capacitors for a period of two years from the date they view the materials or one year after the conclusion of the litigation, whichever is longer (paragraph 7). First, the Court recognizes that the parties advanced all their arguments in a single joint motion and therefore GRANTS the parties' joint motion to file excessive pages in support of their memorandum of points and authorities [Doc. No. 32]. Second, having reviewed and considered the parties' arguments, the Court GRANTS the parties joint motion for a protective order [Doc. No. 31]. Finally, the Court addresses the parties' separately-lodged joint motion

to file Exhibit G under seal. DISCUSSION Paragraph 8(c): In-House Counsel for ATC. [1] The parties agree that in-house counsel's access to information designated Attorneys Eyes Only should be limited, but disagree as to who shall be one of ATC's designated in-house attorneys eligible to review that information. ATC seeks to include the bolded language into paragraph 8(c) below: No more than two (2) in-house attorneys or officers of the receiving party (including support staff as reasonably necessary), who have signed the form attached hereto as Attachment A, who are responsible for and/or working directly in the prosecution or defense of this action, and are not presently involved in patent procurement activities and/or in business decision-making and provided that no unresolved objections to such disclosure exist after proper notice has been given to all parties as set forth in paragraph 10(b), below, including Mr. Evan Slavitt, Esq., Secretary of ATC and also VP of Business and Legal Affairs of AVX. ATC argues Slavitt, its Secretary and General Counsel, needs access to Presidio's information marked Attorneys Eyes Only because Slavitt has direct responsibility to oversee this litigation, formulate strategy and evaluate settlement possibilities. Presidio objects, arguing that Slavitt is a competitive decision-maker both for ATC and its parent company AVX (a non-party), and that giving him access to Presidio's most highly confidential information would place Presidio at great risk of inadvertent disclosure to its competitive disadvantage. When evaluating the risk of inadvertent disclosure of Presidio's confidential information to Slavitt, the Court must examine the factual circumstances of Slavitt's relationship to ATC. See Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir.1992) (citing U.S. Steel Corp. v. U.S., 730 F.2d 1465, 1468 (Fed.Cir.1984)). The key inquiry is whether Slavitt is "involved in `competitive decisionmaking'; that is, advising on decisions about pricing or design `made in light of similar or corresponding

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information about a competitor.'"Brown Bag, 960 F.2d at 1470 (barring in-house counsel from accessing confidential information even when outside counsel withdrew from the litigation) (quoting U.S. Steel, 730 F.2d at 1468 n. 3) (allowing in-house counsel access to confidential information where both parties agreed that in-house counsel was not involved in competitive decision-making). If the inhouse counsel is involved in "competitive decisionmaking," "the risk of disclosure may outweigh the need for confidential information."Intel Corp. v. VIA Technologies, Inc., 198 F.R.D. 525, 529 (N.D.Cal.2000) (citations omitted). The party attempting to show the need for confidential information must show actual prejudice to that party's case and not just increased difficulty in managing the litigation. See id. *2 Slavitt is ATC's Secretary and General Counsel. Slavitt Decl. ¶ 4. His primary business responsibilities at ATC are to attend and draft minutes of the meetings of ATC's Board of Directors and Officers, and give legal advice relating to contracts, employment, foreign trade and environmental law. Slavitt Decl. ¶ 5. He does not give advice on pricing, marketing strategies, product development and review, manufacturing or patent claim drafting. Slavitt Decl. ¶ 5. He is not substantively involved in ATC's patent prosecution. Slavitt Decl. ¶ 6. Slavitt is, however, directly responsible for overseeing this patent infringement case and evaluating settlement possibilities. Slavitt Decl. ¶ 7. ATC argues it will be prejudiced if Slavitt cannot access the Attorneys Eyes Only information because this is ATC's first patent infringement case in its 30-year history, and ATC needs Slavitt's guidance because ATC's management is not experienced in litigation strategy and settlement evaluation. Slavitt Decl. ¶¶ 8-10. Slavitt is the Vice-President of Business and Legal Affairs and Head of Acquisitions for ATC's parent corporation, non-party AVX. Slavitt Decl. ¶¶ 4, 15. In these roles, Slavitt reviews summaries, projections and analyses prepared by financial and marketing personnel. Slavitt Decl. ¶ 15. He has complete charge of AVX's employees and outside advisors during an acquisition. Slavitt Decl. ¶ 16. He is also AVX's sole in-house lawyer, and drafts and reviews AVX's contracts for competitive bids on projects. Slavitt Decl. ¶¶ 17-18. AVX competes with Presidio.FN1

In September 2007, AVX acquired ATC as its wholly-owned subsidiary. Slavitt Decl. ¶ 4. In having complete charge of AVX's acquisition of ATC, Slavitt would have been required to evaluate ATC's products, competitiveness, profitability, sales and market potential. Slavitt reviews summaries, projections and analyses to make financial and marketing decisions for AVX. He drafts and reviews contracts for AVX for competitive bids that could compete with Presidio. This Court finds that Slavitt's role necessarily requires him to engage in competitive decision-making for AVX. While AVX is not a party to this litigation, it is the parent corporation of defendant ATC. Presidio's most precious technical and commercial information should not automatically go to an officer of a competing company that is not even a party to this litigation. See In re Plastics, 2005 U.S. Dis. LEXIS 23771, *14-*15, 2005 WL 1458692 (E.D.Penn.2005) (preventing "disclosure of highly confidential information to the in-house legal department of a non-party ... potentially a competitor to the party designating and producing the information, even if that legal department provides legal advice to a party in this litigation"). Further, ATC does not show that it will be actually prejudiced if Slavitt is prohibited from reviewing Presidio's most confidential information. While it argues that its management is inexperienced with making patent litigation decisions, at most, ATC shows it may have more difficulty in managing the litigation. For example, ATC does not allege that its outside counsel's ability to litigate will be impaired, or that its management is completely ill-equipped to thoughtfully evaluate outside counsel's recommendations. Finally, ATC never addresses the potential damage to Presidio if its most confidential information is shared with Slavitt, or how ATC's need to have Slavitt access the confidential information could outweigh the risk of disclosure for Presidio. *3 Because Slavitt is engaged in competitive decision-making for AVX, and Presidio's risk of disclosure outweighs Slavitt's need for confidential information, the Court ADOPTS Presidio's proposed paragraph 8(c) for the protective order. Paragraph 7: Outside Counsel and Patent

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Prosecutors. Paragraph 7 of the Protective Order addresses the review of Attorneys Eyes Only information by counsel who may also conduct patent prosecution on behalf of a party. Presidio seeks to insert the bolded compromise language into Paragraph 7 below: Any individual who obtains, receives, has access to, or otherwise learns, in whole or in part, technical information relating to products that are unreleased or potential future product offerings, including ongoing research and development, and unpublished patent applications that has been designated ATTORNEYS' EYES ONLY under this Protective Order shall not prepare, prosecute, supervise, or assist in the prosecution of any patent application claiming multilayer capacitor technology within two (2) years from the disclosure of such technical information or one (1) year after the conclusion of this litigation, including any appeals, whichever period is longer. To ensure compliance with this provision, the parties shall create an ethical wall between those persons with access to technical information designated ATTORNEYS' EYES ONLY under this Protective Order and those individuals who prepare, prosecute, supervise, or assist in the prosecution of any patent application claiming multilayer capacitor technology. At issue here is access to ATC's Attorneys Eyes Only information for Presidio's patent prosecution counsel. ATC seeks to force Presidio's patent prosecutors to make a choice: either litigate the patents at issue, or prosecute patents in the family of patents at issue, but not both. Attorneys at the law firm of Wood Herron & Evans LLP (WHE) prosecuted for Presidio the '356 patent at issue and its parent patent. WHE also represents Presidio in litigating the '356 patent in this lawsuit. ATC argues that Presidio's patent prosecutors must be restricted from accessing its confidential information because Presidio may pursue new and modified patent claims in the field of multilayer capacitor technology, where it already holds numerous patents. ATC argues it will suffer prejudice if certain of Presidio's outside counsel who are also patent prosecutors are privy to ATC's confidential capacitor information because armed with that knowledge, even if inadvertent, Presidio's counsel can develop a patent prosecution strategy that

will bring more of ATC's products within the scope of Presidio's patents. ATC says Presidio will not be harmed if its patent prosecutors must choose, because Presidio has a technical expert and team of litigators to work on the litigation. Presidio acknowledges its patent prosecutors should be restricted from certain of ATC's confidential information. It proposes that the patent prosecutors be restricted from seeing confidential information that relates to ATC's unreleased or future products, ongoing research and development and unpublished pending patent applications. Specifically, Presidio advocates access for Thomas Humphrey, one of the prosecutors of the '356 patent, and Presidio's most knowledgeable counsel. Presidio says Humphrey is indispensable to the litigation and must have access to ATC's confidential information, subject to the proposed restriction. *4[2] When deciding whether one side's patent prosecutor should have access to the opposing party's confidential information, courts must balance the "one party's right to broad discovery and the other party's ability to protect its confidential materials from misuse by competitors."Avocent Redmond Corp. v. Rose Electronics, 242 F.R.D. 574, 577 (W.D.Wash.2007) (citing U.S. Steel Corp., 730 F.2d at 1468). The key inquiry is whether the attorney in question is in fact a competitive decision-maker. Id. (citing U.S. Steel Corp., 730 F.2d at 1470). Some courts have found that a company's patent prosecutor also engages in competitive decision-making for that company, and thus must be barred from accessing the opposing party's confidential information. See Infosint S.A. v. Lundbeck, No. 06CIV2869, 2007 U.S. Dist. LEXIS 36678, 2007 WL 3145055 (S.D.N.Y. Oct. 26, 2007); Motorola, Inc. v. Interdigital Technology Corp., No. Civ.A. 93-488 LON, 1994 U.S. Dist. LEXIS 20714, 1994 WL 16189952 (D.Del. Dec. 20, 1994) (prohibiting outside counsel who already received plaintiff's confidential information from prosecuting patents for defendant for one year after litigation ended).FN2"Prosecuting patent applications `involves decisions of scope and emphasis' that implicate competitive decision making, as claims may be drafted to `read on new products and new directions where [a party] project[s] sales to be most critical.'"Commissariat A L'Energie Atomique v. Dell Computer Corp., No. CIV.A. 03-484 KAJ, 2004 U.S. Dist. LEXIS 12782,

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*8, 2004 WL 1196965, *2 (D.Del. May 25, 2004) (barring plaintiff's attorneys from accessing defendant's highly confidential information because they were prosecuting patents involving the technology at issue, including patents for defendant's competitors) (quoting Motorola, 1994 U.S. Dist. LEXIS 20714 at *11, 1994 WL 16189952, *3). Other courts have reached contrary results. See Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 1997 U.S. Dist. LEXIS 24130, 1997 WL 688174 (S.D.Cal.1997); Avocent, 242 F.R.D. 574 (allowing plaintiff's prosecutors access to defendant's confidential information because defendant showed only a "vague and generalized threat of future inadvertent misuse of discovered materials"); AFP Advanced Food Prods. LLC v. Snyder's of Hanover Mfg. Inc., No. CIV.A. 05-3006, 2006 U.S. Dist. LEXIS 426, 2006 WL 1531285 (E.D.Pa. May 31, 2006) (finding the threat of inadvertent use of defendant's confidential information, on its own, is not enough to justify barring plaintiff's attorneys from prosecuting similar patents for two years). [3] Here, Presidio does not seek unfettered access to ATC's confidential information for its patent prosecutors. It "concedes that access to information by [its patent prosecutors] should be limited to a certain extent."Mem. Ps & As, p. 16. Presidio proposes implementing the compromise adopted by the district court in Infosint, which excluded plaintiff's outside counsel from accessing any pending patent applications and ongoing research and development. 2007 WL 3145055, at *1, 2007 U.S. Dist. LEXIS at *16-*17.Presidio advocates for this compromise because it seeks access specifically for Thomas Humphrey of the WHE firm, who has represented Presidio for several years and is the most knowledgeable outside attorney regarding Presidio and the technology involved in this case. Humphrey Decl. ¶ 2. Humphrey says his background in electrical engineering makes him uniquely qualified and necessary to help Presidio in this suit. Humphrey Decl. ¶ 3. *5 ATC argues the proposal is unworkable because ATC's engineers use the research and development related to the accused product for ongoing research and development, so that ATC's confidential technical documents-even if they go to a different product-include information that a patent prosecutor

for a competitor would find relevant to continuous claim drafting. Mem. Ps & As, p. 25. ATC asserts Presidio's patent prosecutors cannot separate this information in their minds. Id. It argues that by sharing its confidential information, ATC will be prejudiced because Presidio's patent prosecutors will know what experiments did and did not work, which would equip them with "a wealth of knowledge about the possible new direction for the technology."Id. at 27 (emphasis omitted). In weighing Presidio's right to broad discovery against ATC's ability to protect its confidential materials from misuse by competitors, the Court ordered the parties to file supplemental briefing addressing how Presidio's proposal could be implemented. The Court also requested that Humphrey file a supplemental declaration addressing (1) his experience and procedure in separating confidential information from information he would use to advise a client; (2) whether he is prosecuting or plans to prosecute additional patent claims in the '356 patent family; and (3) why his access to ATC's confidential information is so critical. Presidio proposed that in addition to the designations of "Confidential" and "Attorneys Eyes Only" that ATC will already be making, it also designate, at its expense, a class of documents as "Attorneys Eyes Only-Unreleased Products". Humphrey did not explain a specific procedure for how he segregates the confidential information in his mind, but stated he would not provide ATC's confidential information to Presidio when advising it on the merits of the litigation. Supp. Humphrey Decl. ¶ 3. He summarily repeated that his background and experience make him uniquely qualified to analyze ATC's confidential information. Supp. Humphrey Decl. ¶¶ 6-8. Most notably, Humphrey said he is "not presently prosecuting and do[es] not have plans to prosecute any additional patent claims in the patent family of the '356 patent."Supp. Humphrey Decl. ¶ 5. ATC, without waiving its objections to Presidio's proposal, offered to designate the third category of documents that would be available to Presidio's patent prosecutors. To safeguard the documents once they are produced to the WHE litigators, ATC proposed WHE implement these additional restrictions:

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(1) Physical Access: Hard copies of ATC's restricted documents shall be kept locked in an area inaccessible to WHE patent attorneys and employees involved in prosecuting Presidio's patent applications. The documents shall not be removed except for copying. (2) Electronic Access: If WHE makes electronic copies of ATC's restricted documents, WHE must password protect the restricted documents with a hard-to-guess password. WHE should also keep an electronic access log sufficient to identify who had accessed the restricted documents, and when. *6 (3) Information Based or Derived from ATC Restricted Documents: WHE should create an "ethical wall" between the patent attorneys and the litigators to prevent WHE litigators from talking to WHE patent prosecutors regarding the content of ATC's restricted documents due to the danger of inadvertent disclosure. ATC's Supp. Brief, pp. 1-2. The Court has considered Presidio's proposed compromise, but is not persuaded that it appropriately addresses ATC's ability to protect its confidential materials from misuse by competitors. In Infosint, the compromise could feasibly work because the patent prosecutor practiced at a firm in Italy while the lead litigators practiced at a firm in New York. Here, the patent prosecutors and litigators are at the same firm, in the same building. Ex. S. As stated in Infosint, the small size of WHE "increases the likelihood of inadvertent disclosure, since the members of the firm who are prosecuting the patents at issue will be under [Humphrey's] supervision."2007 U.S. Dist. LEXIS at *13-*14, 2007 WL 3145055, *3. Further, the physical and electronic restrictions WHE would have to implement, in addition to creating an ethical wall, increase the already-high risk of inadvertent disclosure. These restrictions would not be foolproof, and in its supplement brief ATC conceived of many situations where confidential information could be inadvertently disclosed, and it would be difficult under those circumstances to enforce the terms of the protective order. This Court adopts ATC's proposed version for Paragraph 7 of the protective order and agrees that

the patent prosecutors for any party should make a choice: either prosecute future patents in this family of patents, or litigate the patent at issue, but not both. While the district judge in this matter, Judge Gonzalez, found in a 1997 order that a defendant's patent prosecutors should be able to access the plaintiff's most confidential information, that case is distinguishable here. In Sibia, the magistrate judge entered an order prohibiting defendant's outside counsel, who were actively prosecuting patents for defendant, from accessing plaintiff's confidential information. 1997 U.S. Dist. LEXIS 24130 at *3, 1997 WL 688174. If they did access such information, the protective order required that they not engage in patent prosecution for applications relating to the technology at issue for at least one year until after the conclusion of the litigation. Id. Judge Gonzalez found that the burden imposed on defendant outweighed any risk of inadvertent disclosure, and modified the magistrate judge's protective order to allow all of defendant's outside counsel access to plaintiff's confidential information.Id. at *27.In making her decision, Judge Gonzalez (1) found it "highly significant ... that Sibia has been unable to cite any case other than Motorola in which a court even considered entering a protective order that disqualified outside counsel"; (2) determined that none of the outside attorneys engaged in competitive decision-making for defendant; and (3) ruled there was no indicia that a party was seeking to promote inadvertent misuse of confidential information by "transferring to its litigation counsel the responsibility for prosecuting the same patents that were at issue in the litigation".Id. at 22, 26-27. *7 Here, numerous cases since Motorola have barred a plaintiff's patent prosecutors from accessing a defendant's most confidential information. See p. 6 of this Order, n. 2. Second, Humphrey is involved in competitive decision-making for Presidio. Like the patent counsel in Infosint, Humphrey has represented Presidio for several years and is the most knowledgeable attorney regarding Presidio and the technology in the lawsuit. See Infosint, 2007 U.S. Dist. LEXIS at *13, 2007 WL 3145055, *3. By prosecuting patents for Presidio, Humphrey would have had to make decisions involving scope and emphasis, such as drafting claims to read on new products and new directions "where [a party] projects sales to be more critical."Commissariat, 2004 U.S. Dist. LEXIS at *2, 2004 WL 1196965 (quotations

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omitted). Further, Presidio, as a client of the WHE firm, may expect that Humphrey and other patent prosecutors are intimately involved with decisionmaking. The WHE firm markets itself as a firm with "a managed team approach" where "a lead attorney is closely associated with the client's research and commercial activities."Ex. Q. It advertises that the attorneys are inextricably intertwined with the decision-making of their clients. Ex. R. The firm also advertises that its attorneys employ a patent protection strategy where they "work very closely with the client by explaining the patent coverage currently obtained and currently sought, and receiving input from the client on possible new directions for the technology so that the patent protection can also be steered in those same directions."Ex. P. Humphrey, as the most knowledgeable attorney regarding Presidio and the technology involved in this lawsuit, can be expected, if he prosecutes further patents related to the one at issue here, to discuss new directions for Presidio's technology. Third, there is some indicia that Presidio is at risk of inadvertently misusing ATC's confidential information. Presidio concedes that its patent prosecutors should not have access to all of ATC's highly confidential information. Also, Humphrey says that while he has no plans to prosecute more patents in the '356 patent family, he has not made the same statement regarding the WHE firm as a whole, so it is feasible that the WHE firm could prosecute more patents in the '356 family. See Infosint, 2007 U.S. Dist. LEXIS at *13, 2007 WL 3145055, *3. Finally, if Presidio's patent prosecutors are not allowed access to ATC's confidential information, the burden on Presidio is minimal. Presidio is most concerned about access for Humphrey. But Humphrey says he has no plans to prosecute further patents in the '356 family of patents. Also, if Presidio chooses to keep Humphrey from accessing ATC's most confidential information, Presidio does not show that it will be prejudiced by receiving advice from other lawyers at the WHE firm. In his supplemental declaration Humphrey never addressedthough the Court specifically ordered him to do sowhether any other counsel could adequately advise Presidio with respect to its technical patent issues. Further, Presidio-despite having an additional opportunity to do so-has made only conclusory

assertions as to why Humphrey's access is so critical to litigating this case. *8 Because Humphrey is engaged in competitive decision-making for Presidio, and ATC's risk of disclosure outweighs Presidio's need to have its patent prosecutors access ATC's confidential information, the Court ADOPTS ATC's proposed paragraph 7 for the protective order. The Court DENIES Presidio's proposed compromise for a twotier system of confidential documents accessible to outside counsel. Joint Motion to File Exhibit G Under Seal. The Court has reviewed Presidio's proposed justification for filing Exhibit G under seal and finds that there is good cause to grant the joint motion. The Court will enter a separate order addressing the filing of Exhibit G under seal. Conclusion and Order The Court GRANTS the parties' joint motion to file excessive pages in support of their memorandum of points and authorities [Doc. No. 32] and GRANTS the parties joint motion for a protective order [Doc. No. 31]. The parties shall lodge a proposed protective order in accordance with the terms of this Order by March 7, 2008. IT IS SO ORDERED. FN1. Presidio asserts-and ATC does not rebut-that AVX is a competitor of Presidio. See Mem. Ps & As, p. 14. FN2. Several other courts have barred counsel from accessing the opposing party's confidential information where the counsel was involved in patent prosecution. See Chan v. Intuit, Inc., 218 F.R.D. 659, 662 (N.D.Cal.2003) (barring plaintiff's attorneys who provided advice related to patent prosecution or scope of claims); CumminsAllison Corp. v. Glory Ltd., No. 02 C 7008, 2003 U.S. Dist. LEXIS 23653, 2003 WL 355470 (N.D.Ill. Feb. 12, 2003) (barring counsel from prosecuting certain patent applications up until one year after the

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conclusion of litigation, including appeals); Medtronic, Inc. v. Guidant Corp., No. 001473, 2001 U.S. Dist. LEXIS 22805, 2001 WL 34784493 (D.Minn. Dec. 20, 2001) (barring attorneys who received "Outside Attorneys Eyes Only" information from participating for one year in prosecuting the clients' patents in a certain field); In re Papst Licensing, GmbH, Patent Litig., No. MDL 1298, 2000 U.S. Dist. LEXIS 6374, 2000 WL 1877107 (E.D.La. Dec. 26, 2000) (restricting Papst's counsel because risk of inadvertent disclosure outweighed any impairment on Papst's ability to litigate); Interactive Coupon Mktg. Group, Inc. v. H.O.T.! Coupons, LLS, No. 98 C 7408, 1999 U.S. Dist. LEXIS 12437, 1999 WL 618969 (N.D.Ill. Aug. 9, 1999) (barring plaintiff's counsel because involvement in patentprosecution constituted involvement in competitive decision-making). S.D.Cal.,2008. Presidio Components, Inc. v. American Technical Ceramics Corp. --- F.Supp.2d ----, 2008 WL 608407 (S.D.Cal.) END OF DOCUMENT

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Infosint S.A. v. H. Lundbeck A.S. S.D.N.Y.,2007. Only the Westlaw citation is currently available. United States District Court,S.D. New York. INFOSINT S.A., Plaintiff, v. H. LUNDBECK A.S., et al., Defendants. No. 06 CIV 2869 LAK RLE. May 16, 2007. MEMORANDUM OPINION & ORDER ELLIS, Magistrate J. I. INTRODUCTION *1 Pending before this Court is plaintiff, Infosint S.A.'s ("Infosint"), motion for entry of a protective order pursuant to Federal Rule of Civil Procedure 26(c)(7). Infosint and defendants, H. Lundbeck A.S., Lundbeck Inc., and Forest Laboratories, Inc. (collectively, "Lundbeck"), agree that a protective order is necessary to protect the confidential information being exchanged between the parties and are ready to enter into a stipulated agreement, but disagree as the scope of the proposed order. Infosint requests that the protective order permit information designated as confidential to be accessible to all parties' designated counsel whereas Lundbeck proposes an order in which confidential information would be available to all counsel but only United States trial counsel would have access to information designated by the parties as highly confidential. For the reasons set forth below, Infosint's request is GRANTED, in part, and DENIED, in part. II. BACKGROUND Infosint, as owner of two patents that claim processes for the synthesis of the drug citalopram, brings this action for infringement against Lundbeck. Infosint S.A.'s Memorandum in Support of its Motion for Entry of Protective Order ("Pl.Mem.") at 1. Infosint claims that Lundbeck has infringed upon its patents by marketing products made by the claimed processes in the United States. Id. Because the nature

of discovery in this case requires the production of trade secrets and other confidential material, all parties agree that a protective order is necessary. Id. The parties' dispute is over whether two of Infosint's designated counsel, Stefano de Bosio and Gianfranco Dragotti, will have full access to the information designated as confidential. Infosint relies on de Bosio, an attorney with an Italian law firm, Studio Legale Nodari & Associati, for commercial and corporate legal advice. Id. at 4, 6. Dragotti is also an attorney with an Italian law firm, Dragotti & Associati. Id. at 4. Dragotti advises Infosint on patent issues. Id. Infosint's proposed protective order designates one category of materials, comprised of trade secrets or other proprietary information, as confidential.Id, Exh. A at 1. Access to this information by counsel would be limited to outside counsel for all parties who have entered an appearance in this litigation: de Bosio, Paolo Nodari, and Dragotti, outside Italian counsel for Infosint; and Charles Ryan, John Meidahl Petersen, and Thomas Kirkback, in-house counsel for Lundbeck. Id, Exh. A at 3. Lundbeck objects, arguing that Infosint's proposed order does not adequately safeguard the highly sensitive information Lundbeck is disclosing. Defendants' Memorandum in Opposition to Plaintiff's Motion for Entry of a Protective Order ("Def.Mem.") at 1. In the alternative, Lundbeck suggests a protective order with two levels of confidentiality. Id., Exh. A at 1. Trade secrets and other proprietary information would be designated as confidential and available to all counsel listed above. Id., Exh. A at 2-4. In addition, each side would be permitted to designate certain information as "Outside Counsel Eyes Only." Id., Exh. A at 2. This category would presumptively include "pending patent applications, current manufacturing processes, and ongoing research and development concerning 5-carboxyphthalide and/or citalopram and/or processes for making them."Id. Only outside counsel for all parties and Paolo Nodari, Italian counsel for Infosint,FN1 would have access to the information designated as "Outside Counsel Eyes Only." Infosint's Italian counsel, de Bosio, and its patent attorney, Dragotti, as well as Lundbeck's inhouse counsel, would have the information designated as confidential available to them, but

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would be denied access to information classified as "Outside Counsel Eyes Only." FN1. Nodari's access to the information would be contingent upon him signing a confidentiality agreement, proposed by Lundbeck, which would subject him to the jurisdiction of this Court. II. DISCUSSION A. Standard of Review *2 According to Rule 26(b) of the Federal Rules of Civil Procedure, a party "may obtain discovery regarding any matter, not privileged, which is relevant to the subject matter involved in the pending action."FED. R. CIV. P. 26(b)(1).Rule 26(c)(7) authorizes courts, for good cause shown, to "make any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including ... that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a designated way ..."FED. R. CIV. P. 26(c)(7)."The party seeking a protective order has the burden of demonstrating that good cause exists for issuance of the order."Uniroyal Chem. Co. v. Syngenta Crop Prot., 224 F.R.D. 53, 56 (D.Conn.2004) (internal citations omitted ); see alsoDove v. Atlantic Capital Corp., 963 F.2d 15, 19 (2d Cir.1992) (citations omitted). More than "[b]road allegations of harm unsubstantiated by specific examples or articulated reasoning," good cause requires "the moving party [to] demonstrate that `disclosure will work a clearly defined and very serious injury." ' Uniroyal Chem. Co., 224 F.R.D. at 56 (internal citations omitted ). "Whether information merits protection in a particular case depends upon: 1) the extent to which the information is known outside the business; 2) the extent to which information is known to those inside the business; 3) the measures taken to guard the secrecy of the information; and 4) the value of the information to the business and its competitors."Id. at 56-57.Protective orders limiting access to highly confidential information to counsel and experts "are commonly entered in litigation involving trade secrets and other confidential research, development, or commercial information."Vesta Corset Co., Inc. v.

Carmen Foundations, Inc., 1999 WL 13257, at *3 (S.D.N.Y. Jan 13, 1999) (internal citations omitted ). Here, the information the parties seek to protect consists of trade secrets and other confidential or proprietary information not known to the public or the receiving party. Pl. Mem., Exh. A at 1. The action concerns the alleged infringement by Lundbeck of patents, held by Infosint, the subject of which is a "novel method of making one of the intermediates in the overall ... synthesis" of the drug citalopram. Id. at 1. As the parties themselves anticipate, discovery will necessarily involve the exchange of proprietary information, the disclosure of which is likely to cause economic harm.-is appropriate subject matter for a protective order. Therefore, this information merits a protective order pursuant to Rule 26(c)(7). B. Balancing of Competing Interests "Where a party seeks a protective order restricting the scope of discovery of technical, proprietary information, the court should balance ...`the interests in full disclosure of relevant information and reasonable protection from economic injury.'(internal citation omitted ) Relevant considerations in striking this balance include: 1) whether the person receiving the confidential information is involved in competitive decision making or scientific research relating to the subject matter of the patent, 2) the risk of inadvertent disclosure of proprietary information, 3) the hardship imposed by the restriction, 4) the timing of the remedy and, 5) the scope of the remedy."Uniroyal Chem. Corp., 224 F.R .D. at 57 (internal citations omitted )."The competing interests to be evaluated in determining the outcome of such a dispute are one party's right to broad discovery and the other party's ability to protect its confidential materials from misuse by competitors."Medimmune, Inc. v. Centocor, Inc., 271 F.Supp.2d 762 (D.Md.2003) (internal citations omitted ). *3 Whether a protective order should bar access to information by one party's attorney depends on the potential for "inadvertent or accidental disclosure." U.S. Steel Corp. v. United States,730 F.2d 1465, 1468 (Fed.Cir.1984). When conducting an inquiry, courts have adopted a case-by-case analysis, rather than a category-based exclusion policy, looking at "the factual circumstances surrounding each individual counsel's activities, association, and

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relationship with a party."Id."[P]roper review of protective orders in cases such as this requires the district court to examine factually all the risks and safeguards surrounding inadvertent disclosure by any counsel, whether in-house or retained."Brown Bag Software v. Symantec Corp, 960 F.2d 1465, 1470 (9th Cir.1992) (emphasis in original ). The inquiry should not be directed at any one attorney's own ethical standards or record.Mikohn Gaming Corp. v. Acres Gaming Inc., 50 U.S.P.Q.2d 1783, 1784 (D.Nev.1998)."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 information would create `an unacceptable opportunity for inadvertent disclosure." ' Id. (quoting U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed.Cir.1984)). Lundbeck's proposed two-tier system of confidentiality would exclude Infosint's Italian counsel, de Bosio, and its patent attorney, Dragotti, from having access to information designated as "highly confidential." Def. Mem. at 1-2. Lundbeck's proposed order would also prevent disclosure of Infosint's "highly confidential" information to its own in-house counsel. Id. Infosint's proposed order would permit all information designated as confidential under the protective order to be available to the above-named attorneys, as well as Infosint's Italian counsel, Nodari, and all parties' U.S. trial counsel. Pl. Mem. at 3. C. Scope of the Protective Order Whether it is appropriate for Dragotti and de Bosio to be denied access to Lundbeck's "highly confidential" information depends on whether they are involved in competitive decision-making, thereby creating a risk of inadvertent disclosure, and, if so, the hardship their exclusion would impose on Infosint. 1. Patent Counsel, Gianfranco Dragotti Infosint does not have an in-house patent function, and instead relies on Dragotti, "a widely known and respected member of the Italian and European patent bars," for patent issues. Pl. Mem. at 4; id. at 7;id., Exh. C ¶ 3. Dragotti has been providing Infosint with scientific and legal advice since 2000. Id, Exh. C ¶ 6. Dragotti is neither an officer nor employee of

Infosint, and is not involved in "business decisions regarding competitors of Infosint."Id. at 6;id., Exh. C ¶ 8. Dragotti's "advice to Infosint does not relate to matters regarding the prosecution of Infosint's pending or future patent applications."Infosint S.A.'s Reply Memorandum in Support of its Motion for Entry of Protective Order ("Pl.Reply"), at 2. While Dragotti's firm does prosecute patents for Infosint, Dragotti "was not substantively involved in the prosecution of the applications leading to the patents in suit, nor is he personally involved in the prosecution of any pending applications related to the patents in suit."Pl. Mem. at 8; Pl. Mem., Exh. C ¶ 7. *4 Lundbeck alleges, though without specifying how, that Dragotti's declaration "make[s] it clear that [he] is involved in competitive decision making for Infosint."Def. Mem. at 2. Lundbeck also argues that Dragotti should be denied access to "highly confidential" information because he "is the principal of Dragotti & Associati, a firm that is involved in the ongoing prosecution of Infosint's patent applications relating to the technology at issue in this litigation, including a continuation application of one of the patents-in-suit."Id. "Several courts have determined that advice related to patent prosecution and advice on the scope of patent claims constitute competitive decisionmaking."Andrx Pharmaceuticals, LLC v. Glaxosmithkline, PLC, 236 F.R.D. 583, 586 (S.D.Fl.2006) (internal citations omitted )."Prosecuting patent applications `involves decisions of scope and emphasis' that implicate competitive decision making, as claims may be drafted to `read on new products and new directions where [a party] projects] sales to be most critical." ' Commissariat A L'Energie Atomique v. Dell Computer Corp., 2004 WL 1196965, at *2 (D.Del. May 25, 2004) (quotingMotorola, 1994 WL 16189689, at *4) (finding that plaintiff's patent attorneys' current prosecution of patent applications related to the subject matter of the suit created a high risk of inadvertent disclosure of confidential information). Based on the record before the Court, it appears that Dragotti is involved in competitive decision-making with regard to Infosint. For nearly seven years, Dragotti has provided Infosint with patent advice, based on his scientific and legal expertise. While he did not prosecute the patent asserted in this litigation

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himself, he was, by his own omission, involved in his firm's prosecution of the patent, at least to some degree. While he has offered to refrain from "any involvement in such prosecution in the future," he has not made the same offer with respect to his firm as a whole. Pl. Mem ., Exh. C. ¶ 7. Dragotti's position as the only named partner in the firm also increases the likelihood of inadvertent disclosure, since the members of the firm who are prosecuting the patents at issue will be under Dragotti's supervision. SeeAndrx Pharmaceuticals, LLC, 236 F.R.D. at 587 (finding that small size of firm increased chance of accidental disclosure of confidential information). Infosint claims that it will be harmed by Dragotti's exclusion because neither Nodari nor de Bosio are technically trained and, therefore, cannot "advise Infosint effectively with respect to the technical patent issues."Id. at 5, 7. Infosint' states that it "desires to have the advice and counsel of its trusted European patent counsel."Pl. Reply at 4. Lundbeck's counter-argument is two-fold. First, it claims that Infosint "has failed to explain how restricting access to [Lundbeck's] highly sensitive material to U.S. counsel of record and one Italian counsel could impose an undue hardship."Def. Mem. at 3. Lundbeck notes that Infosint's experts will have access to all information, thereby being able to give technical assistance. Id. at 8. Second, it argues that Dragotti will still have access to the vast majority of information produced, and, if necessary, Infosint's U.S. counsel will be able to seek Dragotti's advice without disclosing the substance of the "highly confidential" material. Id. at 3-4. *5 If counsel is determined to be involved in competitive decision-making, the issue is whether there is a demonstrated a need for access to the documents sufficient to outweigh the concerns such access gives rise to. Quotron Systems, Inc. v. Automatic Data Processing, Inc., 141 F.R.D. 37, 40 (S.D.N.Y.1992); see alsoVesta Corset Co., Inc., 1999 WL 13257, at *3. A confidentiality order that excludes in-house counsel may be found to cause minimal prejudice when "[o]utside counsel has been involved in this litigation from the beginning and is fully familiar with the facts."Sullivan Mktg., Inc. v. Valassis Commc'ns, Inc., 1994 WL 177795, at *3 (S.D.N.Y. May 5, 1994). When the challenged counsel is also litigation counsel, courts have permitted access, but with controls tailored to prevent

accidental disclosure. See, e.g.,Motorola, Inc. v. Interdigital Tech. Corp., 1994 WL 16189689, at *4 (D.Del. Dec. 19, 1994) (permitting patent prosecution firm to build a "Chinese wall" so that attorneys could continue prosecuting patents but attorneys who had access to confidential information could continue representing plaintiff in litigation); Commissariat A L'Energie Atomique v. Dell Computer Corp., 2004 WL 1196965, at *2 (D.Del. May 25, 2004). Infosint has not provided a sufficiently compelling reason why Dragotti should have access to Lundbeck's most confidential information. In its submissions to the Court, Infosint had made conclusory assertions of importance, but has not shown how or why Dragotti's access to the information in question "is critical to the prosecution of its case."Andrx Pharmaceuticals, LLC, 236 F .R.D. at 587. While Infosint's desire to have its trusted counsel involved in the litigation is understandable, Lundbeck's desire to keep its proprietary information protected is a superior interest. The Court does not believe that Dragotti would be anything but ethical in his dealings with the information, but the opportunity for accidental disclosure or subconscious influencing of actions or advice is too great. This decision will not cause Infosint undue harm. First, Dragotti is not Infosint's litigation counsel in this case, so access to the information is not crucial to prosecuting Infosint's claim. Second, Dragotti will still have access to all information designated as confidential, but will only be denied access to "pending patent applications, current manufacturing processes, and ongoing research and development concerning 5carboxyphthalide and/or citalopram and/or processes for making them."Def. Mem., Exh. A at 2. 2. Italian Counsel, Stefano de Bosio Infosint relies on de Bosio, as well as Nodari, for advice on commercial and corporate legal matters. Pl. Mem. at 4, 6; id., Exh. B ¶¶ 3-4. In this role, de Bosio does not "engage in competitive decision-making for Infosint," which Infosint defines as "decisions about pricing or product design made in light of similar or corresponding information about a competitor."Id. at 6. A respected member of the Italian bar, de Bosio is not an officer or employee of Infosint. Id. at 6-7;id., Exh. B ¶¶ 2, 5. He also agrees to be "subject to the jurisdiction of this court with respect to any dispute

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relating to" the protective order. Id., Exh. B ¶ 7. Lundbeck puts forth two primary arguments as to why de Bosio should not have access to the information. Def. Mem. at 9-10. First, Lundbeck claims that "it is clear that" de Bosio is involved in competitive decision-making because Infosint's business is the holding and assertion of patent rights and, "under such circumstances, the principal business decisions ... are likely to be made, or at least heavily influenced, by [Infosint's] legal advisers."Id. at 9. Second, Lundbeck argues that de Bosio should be precluded from access to "highly confidential" information because he "is likely to be called as a fact witness in relation to [Lundbeck's] defenses of "license" and "arbitration and award," based on his prior representation of Infosint's predecessors in interest."Id. at 3. Infosint argues that Lundbeck's desire to depose de Bosio is not a legitimate reason to deny him access to information because Lundbeck has failed to articulate any reason why taking his deposition is inconsistent with him having access. Pl. Mem. at 8; Pl. Reply at 5. *6 There has been no evidence presented by Lundbeck to contradict de Bosio's statement that he is not involved in competitive decision-making. Unlike advice on patent issues, there is no precedent that general corporate legal advice constitutes involvement in competitive decision-making. Therefore, the Court finds that de Bosio is not involved in competitive decision-making, "which is arguably the determinative factor in this analysis,"Amgen, Inc. v. Elanex Pharmaceuticals, Inc., 160 F.R.D. 134, 139 (W.D.Wa.1994) (rejecting two-tier system of confidentiality proposed by defendant after finding that plaintiff's in-house counsel was not involved in competitive decisionmaking, in spite of defendant's argument that plaintiff had sufficient representation in outside counsel). As for Lundbeck's second argument, that their intention to call de Bosio as a fact witness should prevent him from having access to "highly confidential" information, there appears to be no rationale based on the subject matter on which de Bosio will potentially be deposed. IV. CONCLUSION For the foregoing reasons, Infosint's motion for a protective order is GRANTED, in part, and DENIED, in part, and Infosint shall submit a proposed order, in

accordance with this opinion, for the Court's consent by May 22, 2007. SO ORDERED S.D.N.Y.,2007. Infosint S.A. v. H. Lundbeck A.S. Slip Copy, 2007 WL 1467784 (S.D.N.Y.) END OF DOCUMENT

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Not Reported in F.Supp.2d Not Reported in F.Supp.2d, 2004 WL 1196965 (D.Del.) (Cite as: Not Reported in F.Supp.2d, 2004 WL 1196965 (D.Del.))

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Commissariat A L'Energie v. Dell Computer Corp. D.Del.,2004. Only the Westlaw citation is currently available. United States District Court,D. Delaware. COMMISSARIAT A L'ENERGIE ATOMIQUE, Plaintiff, v. DELL COMPUTER CORPORATION; Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; Samsung Electronics Canada, Inc.; Samsung International, Inc.; Sun Microsystems, Inc.; and Viewsonic Corporation, Defendants. No. Civ.A. 03-484-KAJ. May 25, 2004. Richard D. Kirk, Morris, James, Hitchens & Williams, Wilmington, DE, for Plaintiff and CounterDefendant. William J. Marsden, Jr., Fish & Richardson, P.C., Wilmington, DE, for Defendants. Richard L. Horwitz, Potter Anderson & Corroon, LLP, Wilmington, DE, for Defendants and CounterClaimant. MEMORANDUM ORDER JORDAN, J. *1 This is a patent infringement case. Jurisdiction is proper under 28 U.S.C. § 1331. Presently before me is a Motion for Expedited Entry of Protective Order filed, on April 13, 2004, by plaintiff Commissariat à L'Énergie Atomique ("CEA"). (Docket Item ["D.I."] 172; the "Motion".) For the reasons that follow, CEA's Motion will be denied. CEA alleges that Defendants FN1 are infringing its U.S. Patent No. 4,701,028 (issued October 20, 1987)("the '028 patent") and U.S. Patent No. 4,889,412 (issued December 26, 1989)("the '412 patent"), both of which claim certain liquid crystal display ("LCD") technology. (See D.I. 1.) CEA filed a motion for a preliminary injunction against Samsung on October 28, 2003 (D.I.58, 59) and, on March 3, 2004, I granted CEA's request for limited expedited discovery in connection with that motion (D.I.138). Samsung provided some responsive

information to CEA's expedited discovery requests, and both sides want some form of protective order in place to protect confidential information, but CEA and the Defendants have reached an impasse in their negotiations over the scope of the protective order that should be entered.FN2 (See D.I. 173 at 1; D.I. 199 at 2.) FN1. On May 13, 2004, I issued a Memorandum Order granting in part and denying in part CEA's Motions to Consolidate this case with several others. (D.I.209.) Any reference herein to the "Defendants" means the module manufacturers against whom this action is now proceeding, namely, Samsung Electronics ("Samsung"), Fujitsu Display Technologies Corporation ("Fujitsu"), and Tottori Sanyo Electric Co., Ltd. ("Tottori Sanyo").(Id. at 8.) The Defendants have each submitted formal or letter briefing in response to CEA's Motion. (See D.I. 182, 183, 196, 198, 199.) FN2. The Defendants, recognizing that these protective order issues will impact them equally as this case moves forward, share a common position in response to CEA's propose