Free Declaration in Support - District Court of California - California

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 1 of 52

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 2 of 52

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
ATTORNEYS AT LAW SILICON VALLEY

I, John D. Minton, declare as follows: 1. I am an associate at the law firm of Latham & Watkins LLP, counsel of record for

Michael Zaccaro, plaintiff and counterclaim defendant in the above-captioned matter. I have personal knowledge of the facts set forth below and if called as a witness could testify competently to them. 2. A true and correct copy of the subpoena served by Michael Zaccaro on EXP

Pharmaceutical Services Corp. ("EXP"), together with the cover letter provided therewith, is attached hereto as Exhibit A. 3. A true and correct copy of the underlying complaint in this action is attached

hereto as Exhibit B. 4. A true and correct copy of the list identifying the more narrow set of

representative screen prints sought by Michael Zaccaro with his subpoena is attached hereto as Exhibit C. 5. A true and correct copy of the protective order entered in the United States

District of the Northern District of Illinois to address the confidentiality concerns of the parties and third parties is attached hereto as Exhibit D. 6. I understand that the parties' counsel have engaged in substantial meet and confer

discussions in an effort to resolve the issues raised by the Subpoena. Upon information and belief, Zaccaro counsel Matt Walch and EXP counsel Chico Meyers engaged in multiple phone discussions over July and August regarding the scope of the subpoena. I am informed and believe that, while EXP produced one of the two categories of documents that Zaccaro requested with respect its Subpoena as modified by discussions with counsel, it refused to produce the second category of documents. In particular, I am further informed and believe that EXP produced representative samples of reports that its pharmaceutical processing software generates, but refused to produce representative screen prints of that software in operation. /// /// /// 1
DECLARATION OF JOHN D. MINTON IISO DEFENDANT MICHAEL ZACCARO'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS FROM THIRD PARTY EXP PHARMACEUTICAL SERVICES CORP.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 3 of 52

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 4 of 52

EXHIBIT A

Case 4:07-mc-80231-SBA
Matthew W. Waich Direct D ~ a l(312) 876-7603 matthew walch@lw corn

Document 2

Filed 10/01/2007

Page 5 of 52

Sears er, Sulte 5800 233 S Wacker Dr Chlcago l l l ~ n o ~ s 60606 Tel +3128767700 Fax +3129939767 www IW corn FIRM I AFFILIATE OFFICES Barcelona Brussels Ch~cago Frankfurt Hamburg Hong Kong London Los Angeles Madnd M~lan New Jersey

New York Northern Vlrgln~a
Orange County Par~s San D~ego San Franc~sco Shanghai S~l~con Valley Singapore Tokyo Wash~ngton D C

July 13,2007

VIA HAND DELIVERY EXP Pharmaceutical Services Corp. C/O Gus J. Changaris Or Person Authorized To Accept Service 4802 1 Warm Springs Boulevard Fremont, California 94539 Re:

Moscow Munch

Pharmaceutical Inventories, Inc., v. Zaccaro, Case No. 05 6483

To Whom it May Concern: Enclosed please find a subpoena issued to EXP Pharmaceutical Services Corp. ("EXP") in the above-captioned case, As described in Exhibit A, the subpoena seeks the production of documents sufficient to show the design and screen layouts of any pharmaceutical returns software owned by EXP as well as the production of a sample report generated by such software. In certain discovery responses served in the above-referenced case, the plaintiff has alleged that Mr. Zaccaro copied the "look and feel" of PRS's software by using certain fields, commands and functionality that are commonplace in the pharmaceutical returns industry. The requested information regarding the software program(s) used by EXP will help prove to PRS and its counsel that software within this industry has to incorporate certain fields, commands and functionality to serve the needs of the customer in this industry and that such fields, commands and functionality are not and cannot be owned by any one business in this industry. Please note that we fully appreciate the potential highly confidential nature of the requested information, and to that end we have enclosed a copy of the Restricting Order entered by the court in this case. Pursuant to this Restricting Order, none of the parties in the underlying litigation will be able to see any information designated as Highly Confidential Information. Indeed, access to such information is limited to outside counsel for the parties, Independent Experts, court personnel and court reporters and all such persons are explicitly bound by the terms of the Restricting Order. For your information, Section 7.8 specifically addresses the application of the protective order to documents produced by non-parties to the litigation. The subpoena also asks for the deposition of a company representative. Such a deposition would be necessary only if we have to verify the genuineness and establish the admissibility of any documents that EXP would produce in response to the subpoena. We would be happy to discuss a Rule 901 verification if that would be more convenient and if plaintiffs

Case 4:07-mc-80231-SBA
July 13, 2007 Page 2

Document 2

Filed 10/01/2007

Page 6 of 52

counsel would agree to such a verification and otherwise agree to the admissibility of the information produced by EXP. Please do not hesitate to call me if you want to discuss the subpoena or the enclosed Restricting Order any further. Sincerely,

Matthew W. Walch Enclosure
cc:

George Jackson (outside counsel for Pharmaceutical Inventories, Inc.)

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 7 of 52

%A088 (Rev. 1 -

a

,

C I V Case I~

Issued by the

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT PHARMACEUTICAL INVENTORIES, INC. DISTRICT OF CALIFORNIA

v.
MICHAEL ZACCARO AND RETURNS R US

SUBPOENA IN A CIVIL CASE

case ~

~1 05 C 6483 (N.D. Ill.) ~ b

~

~

:

TO: EXP Pharmaceutical Services Corp.
C/O Gus J. ChangarislPerson Authorized To Accept Service 48021 Warm Springs Boulevard Fremont, California 94539 YOU ARE COMMANDED to appear in the United States District court at the place, date, and time specified below to testify in the above case.
PLACE O F TESTIMONY

'(Deposition for person most knowledgeable of authenticity of produced documents)

Gf

YOU ARE COMMANDED to appear at the place, date, and time specified below to testify at the taking of a deposition in the above case.
O F DEPoSIT1ON

I I

COURTROOM

DATE A N D 'TIME

505 Montgomery Street, Suite 2000 San Francisco, CA 941 11 (to be recorded by stenographic means)'

DATE AND TIME

811312007 9:00 am

Gf

YOU ARE COMMANDED to produce and permit inspection and copying ofthe following documents or objects at the place, date, and time specified below (list documents or objects):

PLEASE SEE EXHIBIT A ATTACHED HERETO.
PLACE

505 Montgomery Street, Suite 2000 San Francisco, CA 941 11
I

DATE AND TlME

8/13/2007 9:00 am

YOU ARE COMMANDED to permit inspection of the following premises at the date and time specified below.
PREMISES DATE AND TIME

A n y organization not a party to this suit that is subpoenaed for the taking of a deposition shall designate one or more officers, directors, or managing agents, or other persons who consent to testify on its behalf, and may set forth, for each person designated, the matters on which the person will testify. Federal Rules of Civil Procedure, 30(b)(6).
ISSUING OFFICER'S SIGNATURE AND TITLE (INDICATE IF ATTORNEY FOR PLAINTIFF O R DEFENDANT)

f ; l U ISSUING OFFICER'S NAME, ADDRESS AND PHONE NUMBER
j

'%~u

DATE

4 & 3 &

z

*

~

~

~ 711312007

MATTHEW W. WALCH, LATHAM & WATKINS LLP, 233. S. WACKER DRIVE, SUITE 5800, CHICAGO, IL 60606
(See Rule 45, Federal Rules of Clvll Procedure. Subhv~slons c ) .(d), and (e), on next page) (

'

If actlon 1s prndlng ~n d ~ s t r ~other than dlstrlct of Issuance, state dlstrlct under c a r number ct

Case 4:07-mc-80231-SBA
'UNITFC STA'ES DISTRICT COURT FOR NORTHERN DISTRICT OF CALIFORNIA PHARMACEUTICAL INVENTORIES, INC. Plaintiff

Document 2

Filed 10/01/2007

Page 8 of 52

Z

-vsMICHAEL ZACCARO AND RETURNS R US

) ) 05 C 6483 (N.D 11 1) RETURN OF AUTHORIZED SERVICE ) )

Letter, Subpoena and Restricting Order

Defendant ) Received by 1-800-SERVE-EM on July 16,2007 at 10:12 AM to be sewed on EXP Pharmaceutical Services Corp., . I, Kathy Watson, who being duly sworn, depose and say that on July 16, 2007 at 12:09 PM , I: Served EXP Pharmaceutical Services Corp. by delivering a true copy of the Letter, Subpoena and Restricting Order with the date and hour of service endorsed thereon by me, to Gus J. Changaris , authorized to accept service at 48021 Warm Springs Boulevard Fremont, CA 94539.

I am over the age of 18, have no interest in the above action, and am authorized to serve process in the county in which the process was served.

Kathy 1-800-SE E-EM 800.737.8336 Job Serial Number: 2007227878 Reference. 05 C 6483 (N.D. 11 1)

R e c e i v e d T i m e i i u l . 13. 1 2 : 2 0 P M

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 9 of 52

PROOF OF SERVICE
DATE PLACE

SERVED
StRVEI) O N (PRINT NAME) MANNER O F SERVICE

SERVED BY (PRINT NAME)

TITLE

DECLARATION OF SERVER
I declare under penalty ofperjury under the laws ofthe United States of Americathat the foregoing information contained in the Proof of Service is true and correct.

Executed on
DATE

SIGNA I'URE OF SERVER

ADDRESS O F SERVER

Rule 45. Federal Rules or Civil Procedure, Subdivisions (c), (d), and (e), as amended on December 1,2006:
(c) I'HOTLCTION OF PERSONS StJBJECTTO SUBPOENAS. ( I ) A parry or an attomey responsible for the Issuance and service of a subpoena shall take rcasnnable steps to avo~dImposing undue burden or expense on a person subject to that bubpena. 'The court on behalf of which the s u b p ~ was issued shaN enforce this duty and a inlpose upon the party or attorney in breach of this duty an appropriate sanction. which may ~nclllde, is not limited to, lost eamlnys and a reasonable attorney's fee. but (2) (A) A person commanded to produce and permit inspection, copying, testlng, or sampling ofdes~gnated electron~cally stored information. books, papers, documents or tangible things, or lnspection of premises need not appear in pcrson at the place of production or inspection unless co~nmandedto appear for deposition. hevlng or trial. (B) Subject to paragraph (d)(Z) orthis rule, a person commanded to produce and permit ~nspection.copyma testing. or sampling may, wcthin 14 days after service of the subpoena or before the tllne spec~fied compliance ~f such time is less than 14 days after service, serve for to upon the party or attomey designated in the s u b p n a written object~on producing any or all ofthe designated materials or ~nspectionofthepremlses-or to producing electronically stored ~nfonnat~onthe form or fonns requested. [fobjection is made. the party serving the subpoena in shall not be entitled to ~nspcct.copy, test, or sample the materials or inspect the premises except by pursuant to an orderofthe c o ~ m whichthe subpoena wasissued. Ifobjectron has been made. the puiy sewing the subpoena may, upon notice to the person commanded to produce. move .I( m y trine Ibr ; order to compel the production, ~nspection, m copying, testing, or rampllng. Such an order to compel shall protect any pcrson who isnot apartyoran oficer o f a party from a~gnlficunt expense rcsulting from the tnspection. copymy. testlng, or sampling commanded. ( 3 ) ( . 1 ) On tllnely motlon, the court by which a subpoena was tssued shall quash or mod~fy the iubpoena 11'1t ( I ) falls to allow reasonable ttmc for compl~ance: (11)requtres a person who is not a party or an officer of a pany to travel to a place Inorc than 100 miles from the place where that pcrson resides. ~semployed regularly transacts or busllless in person. except that, subject to the provlslons ofclause (c)(3)(BHii1) of thls rule, such a person may In order to attend tr~al commanded to travel from any such place w~thin be the state rn whrch the trlal IS held; (III~ requlres d~sclosure ofprivileged or other protected matter and no exception M walver applies: or (IV) subjects a person to undue burden. (B) If a bubpoena (I)requlrcs dlsclosure o f a trade secret M other confident~d research. development, or commerc~dtnformahon, or (11) requlres dlsclosure of d n unretarned expert's oplnion or information not Jescr~blnp 5pec1fic events or occurrences in dispute and resulting from the expert's study made not at the request of any party, or (111)requlres a person who 1s not a party or an otiicer of a party to Incur substant~al expense to navel more than 100 mlles to attend mal, the court may, to protect a person iubject to or affected by the subpoena quash or mod~fy subpoena or. ~fthe party In whose behalf the the subpoena is issued shows a substantial need for the testimony or matenal that cannot be otherwise met without undue hardship and nssuras that the person to whom the subpoena 1s addressed w ~ lbe reasonably compensated. the court may order appearance or production only l upon specified conditions. (d) DUTIES M RESPONDING TO SUBPOENA (I) (A) A pcrson respondmg to a subpoena to produce documents shall produce them as they arc kept In the usual course of business or %hallorganlze and label them to correspond w ~ t h the categories In the demand ( 8 )Ifa subpoena does not spec~fy form or forms for producing electronically stored the ~nformahon, person respondrng to a subpoena must producc the tnformat~onIn a form or a forms In whlch the person ordlnar~lym n t a l n s 11 or In a form or forms that are reasonably usable stored (C) A person responding to asubpocnaneed not produce the same electron~cally ~nformahonIn more than one form dlscovery of elecbonlcally (D) A person rcspondtng to a subpoena need not prov~de stored ~nformatlon from sources that the person ~dent~fies not reasonably a c ~ c s s ~ bbecause as le of undue burden or iost On motlon to compel d 1 ~ 0 v e r y to quash, the person from whom or dls~overy sought must show that the lnformatlon sought ~ s n oreasonably access~ble IS t becduse IS of undue burden or cost If that show~ng made, the cowt may nonetheless order dtscovery from such sources Ifthe requeshng party showsgood cause, consldenny the llmltatlons ofRule 26(bHZ)(C) The court may spec~fy condlt~ons the dlscovery for (2)(A) When l n f o n a t ~ o n subject toa subpoena IS w~thheld aclium that 111s pnvlleged on or subject to protectlon as trial-preparation materials, the claim shall be made expressly and shall be supported by a descnpt~on the nature of the documents, communlcatlons or th~ngs of not produced that IS sufictent to endble the demandinp party to contest the clalm ( 0 ) If lnformatlon 1s produced In response to a subpoena that 1s subject to a clam of pnvllege or ofprotectlon as tnal-prepnrahon mater~al, person makrng the clam may not~fy the m y pany that recaved the rnformatton ofthe c l a ~ m the b a s s for 11 After belng not~fied, and a party must promptly return, sequester, or deswoy the specified ~nformat~on any coplcs ~t and has and may not use or dlsclose the rnformaaon untll the clam IS resolved A reccrvlng pariy may promptly present the lnformatton to the court under seal for a detemunat~on the claim of lfthc recelvtng parly disclosed the lnforrrmt~on before bang notified ~tmust take reasonable steps to retrleve ~t The person who produced the lnformat~on must preserve the lnforrnat~on untll the clalm IS resolved (e) CONTEMPT Fslure of any person w~thout adequate excuse to obey a subpoena sewed upon that person may be deemed a contempt of the court from wh~chthe subpoena Issued An adequate cause for fallure to obey exlsts when a subpoena purports to requlrc a nonparty to not attend or producc at a p l a ~ e w~thlnthe l~mrtsprov~dedby clause (11) of subparagraph (cI(3HA)

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 10 of 52

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION PHARMACEUTICAL INVENTORIES, INC., d/b/a PHARMACEUTICAL RETURNS SERVICE, Plain tiff, v. MICHAEL ZACCARO and RETURNS R US INCORPORATED d/b/a PHARMA LOGISTICS, LTD., Defendants.
)

1
) ) Case No. 05 C 6483 ) ) Judge Gottschall

) Magistrate Judge Ashman ) ) )

1
) )

EXHIBIT A TO SUBPOENA DUCES TECUM INSTRUCTIONS AND DEFINITIONS
1.

The term "document," as used herein, shall mean all material defined in Federal

Rule of Civil Procedure 34 and each and every writing or record of every type that is or has been

in the possession, custody or control of a responding party or to which a responding party or its
counsel has access, including without limitation correspondence, memoranda, stenographic or handwritten notes, drafts, studies, blueprints, journals, invoices, sales slips, vouchers, production records, service records, warranty records, catalogs, advertisements, bulletins, pamphlets, books, publications, pictures, films, voice or other recordings, maps, reports, storage discs or other data records.

2.

The phrase "referring or relating to," as used herein, shall mean all information,

facts and/or documents that directly, indirectly or in any other way support, negate, bear upon, touch upon, incorporate, affect, include, pertain to andlor are otherwise connected with the subject matter about which a request is being made.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 11 of 52

3.

The term "EXP," as used herein, shall mean EXP/Pharmaceutical Services Corp.,

as well as its agents, attorneys, representatives, employees, officers, directors, shareholders and any other person or persons acting for or purportedly acting on its behalf.

4.

The words "and" and "or," as used herein, shall be construed either conjunctively

or disjunctively, as required by the context, to bring within the scope of these requests any information that might be deemed outside their scope by any other construction.

5.

The term "pharmaceutical returns software" shall mean any computer software

that assists in performing any of the following functions with respect to the management of expired, short dated or recalled pharmaceuticals and physician samples: (1) receive; (2) count;

(3) data capture; (4) inventory; (5) determine credit status; (6) determine waste status; (7)
generate Returned Goods Authorizations; (8) create debit memo numbers; (9) reconcile credit transactions; (10) generate rebate checks; (1 1) generate credit letters; (12) generate credit reports; (1 3) generate inventory management reports; (14) interpret and apply manufacturer return policies; (15) store manufacturer returned goods policies; and (16) validate for credit or disposal.

6.

Unless stated differently in any of the individual document requests, the relevant

time frame for each document request is between 1994 and the present.

SPECIFICATIONS
1. licensed by EXP. 2. Documents sufficient to show the overall design of any pharmaceutical Training or user manuals for any pharmaceutical returns software owned or

returns software owned or licensed by EXP.

3.

Documents sufficient to show representative computer screen layouts for

any pharmaceutical returns software owned or licensed by EXP.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 12 of 52

4.

Representative sample reports generated by any pham~act.utical returns

software owned or licensed by EXP.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 13 of 52

EXHIBIT B

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 14 of 52

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION
)

SERVICE,
Ni3V 1 4 2P,i5

1
qnr $JbLL

Plaintiff,

)
)

bf;ngCffALL
3'-~

vs.

j
MICHAEL W DOBBlNU x

iq'.%lw

,I

'b

)

Case No.: JURY DEMAND

. , :: :1=;1-

*.,?.

.

: :u, ~

:; ., <

.

, $

. ,;

.iJ

QLBRK. U.8. OlSfRlCT CoUm MICHAEL ZACCARO, an individual,

1
)

Defendant.

1
)

COMPLAINT FOR INJUNCTIVE RELIEF. COPYRIGHT INFRINGEMENT AND OTHER RELIEF Plaintiff, Pharmaceutical Return Service ("PRS"), by and through its attorneys, Aronberg Goldgehn Davis & Garmisa, for its Complaint against Defendant, Michael Zaccaro ("Zaccaro"), states as follows: PARTIES 1. Plaintiff PRS is an Illinois sole proprietorship with its principal place of business

located in Kane County, Illinois. PRS is in the pharmaceutical return and inventory business. John DeMars ("DeMars") is the President of PRS. 2. At all times relevant to this action, Defendant Zaccaro was and is a citizen of the

State of Illinois and resides in this district.

JURISDICTION AND VENUE 3. Federal subject matter jurisdiction exists in this action pursuant to 28 U.S.C.

§§I33 1 and 1338 because this action arises under the laws of the United States, particularly 17 U.S.C. §jjlOl, et seq., 15 U.S.C. §§1125 and 18 U.S.C. 51030. Jurisdiction exists over all other claims pursuant to 28 U.S.C. 891367.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 15 of 52

4.

Venue is proper in this judicial district pursuant to 28 U.S.C. 881391 and 1400.

Personal jurisdiction and venue are proper because Zaccaro resides in this district, and a substantial part of the events giving rise to this action occurred in this district. FACTS COMMON TO ALL COUNTS
5.

On or about September 1990, DeMars and his brother, Kevin DeMars, began

writing source code for computer software (the "PRS software") that would automate the inventoly process for retums of prescription drugs to manufacturers and distributors for PRS. PRS is a service business that provides physical inventory and processing for credit of outdated pharmaceuticals and proper disposal of non-returnables for pharmacies. The typical inventory and retums service includes performing pharmacy inventory on-site and pulling a pharmacy's outdated pharmaceuticals and over the counter medicines which then go to the PRS office for processing and shipping to the respective manufacturers for pharmacy credit.
6.

In or about the end of 1992, DeMars and his brother, Kevin DeMars, completed

the development of a first version of source code for the PRS software. The PRS software became operational at that time.
7.

DeMars installed the PRS software in the in-house processing department of PRS.

Over the next year and a half, the processing department used the PRS software and gave DeMars feedback regarding any bugs or flaws or additional automation required. DeMars made changes to the PRS software accordingly.
8.

In or about 1992, PRS hired Zaccaro. Zaccaro was assigned to perform

inventories, office work, phone sales and processing of outdated pharmaceuticals. Zaccaro did not aid in the development of the PRS software. 9. In 1995, a revised version of the source code for the PRS Software that was

operable in UNIX and DOS was completed.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 16 of 52

10.

Upon information and belief, from in or about 1994 through in or about 1995,

Zaccaro became interested in entering the pharmaceutical returns and inventory business. In order to do so, he required software to perform processing of outdated inventory and returns for his business.
1 1.

At sometime while Zaccaro was employed at PRS, Zaccaro obtained unauthorized

access to the PRS source code for the PRS software in both UNIX and DOS and, without authorization from any person at PRS, copied the source code and the PRS software. 12. In or about July, 1996, Zaccaro terminated his employment with PRS, without

explanation or notice.
13.

Shortly after Zaccaro left PRS, Zaccaro created a pharmaceutical returns and

inventory business. Upon information and belief, Zaccaro used the PRS source code and software that he had misappropriated in conjunction with the operation of his business. 14. In or about 1996 or 1997, Zaccaro hired a programmer to change the look of the

software and started "Returns".
15.

Upon information and belief, from 1997 through 2004, PRS began to lose

customers to Zaccaro because he was selling andlor using PRS source code and software or software substantially similar to the misappropriated PRS software. 16. In February of 2004, Zaccaro, who was running a company called "Returns R'

Us, Inc. d/b/a Pharma Logistics, Ltd." ("Returns R' Us"), hired Dwight Arant ("Arant"), a business consultant. 17. In or about May 2005, Zaccaro told Arant that while he was employed at PRS, he

was interested in entering the pharmaceutical returns business. Zaccaro also told Arant that while he was employed at his previous employer [PRS], Zaccaro knew someone who could get into the UNIX operating system and the PRS software and take it, which would allow him to open his own business.

3

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 17 of 52

18.

In or about May 2005, Zaccaro admitted to Arant that he had taken the source

code, all databases and software from PRS which Returns had been using, licensing and selling to several pharmacies, wholesalers, other returns services and hospitals. 19. In June 2005, Arant contacted DeMars and informed him that Zaccaro had told

him that he had taken the source code and software from PRS and used it to start his company. 20. Zaccaro has been and is currently operating "Returns" using the source code

and/or software that is a copy of or substantially similar to the PRS software and/or source code he misappropriated from PRS. Upon information and belief, Zaccaro plans on selling rights to the source code, software and Returns R' Us to other companies. 21. As the creator and owner of the source code and software, PRS has an exclusive

right to use and sell the PRS software. PRS has a legitimate interest in need of protection, in particular, an interest in protecting its software from being stolen, duplicated, licensed, used and/or sold without authorization by any company(ies) or person(s) other than PRS. 22.

If Zaccaro is allowed to continue to use andlor sell the stolen software or any

unauthorized duplication thereof, PRS will be irreparably harmed. PRS has lost and continues to lose the ability to maintain exclusive use and sale of the PRS software. 23. Since money damages are difficult to ascertain at this time, PRS does not have

any adequate remedy at law. 24. PRS will likely succeed on the merits of its claim that it has an exclusive right to

use and sell the PRS software. 25. PRS is, therefore, entitled to injunctive relief.

WHEREFORE, Plaintiff, Pharmaceutical Return Service, requests that the court:
A.
Enter an injunction enjoining Zaccaro from using, licensing and/or selling the PRS software; Enter an injunction enjoining Zaccaro from using, licensing and/or selling any software that is based upon or is a duplication of the PRS software;

B.

4

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 18 of 52

C.

Enter an injunction enjoining Zaccaro from using, licensing and/or selling any software that uses or duplicates elements of the PRS software; and Enter such other relief the court deems just and appropriate.

D.

COUNT I (COPYRIGHT INFRINGEMENT - ZACCARO)
26.

PRS restates, realleges and incorporates by reference, Paragraphs 1-33 as if they

were fully set forth herein.
27.

PRS is the owner of a valid copyright to the PRS software that has been registered

with the United States Copyright Office, a copy of which registration is appended hereto as

.. Exhlbtt.The PRS software is an original piece of authorship fixed in a tangible medium of
expression 28. Zaccaro is not licensed by PRS, and at all relevant times was not licensed by PRS

to engage in the activities described herein.
29.

Zaccaro, on information and belief, intends to continue to, infringe PRS's

copyright in the PRS software without Plaintiffs consent, in violation of 17 U.S.C. $5 106 and

30.

Said conduct by Zaccaro, on information and belief, was and is willfully done

with knowledge of PRS' copyright. WHEREFORE, Plaintiff, Pharmaceutical Return Service, requests that the court:
A.

Declare that Zaccaro has infringed PRS's copyright in PRS software; Order an accounting of all profits of Zaccaro and award PRS its actual and/or statutory damages, including increased damages for willful violation; Enter a permanent injunction under 17 U.S.C. 5 502 enjoining Zaccaro, and anyone acting in concert with him, including all his or their employees, servants, agents, distributors and persons in active concert with them from using and/or selling the PRS software; Enter an injunction enjoining Zaccaro from using and/or selling any software that is the same as or substantially similar to the PRS copyright of its software;

B.
C.

D.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 19 of 52

E.

Enter an injunction enjoining Zaccaro from using and/or selling any software that uses elements that are the same as or substantially similar to the PRS copyright of its software; Award PRS its costs and attorneys' fees; and Enter such other relief the court deems just and appropriate.

F.
G.

COUNT I1 [CLAIM FOR INJUNCTIVE RELIEF - RETURNS R US, INC.. D/B/A PHARMA LOGISTICS. LTD.1
3 1.

PRS restates, realleges and incorporates by reference, Paragraphs 1-30 as if they

were fully set forth herein.
32.

As the owner of the software, PRS has an exclusive right to use and sell the PRS

software. PRS has a legitimate interest in need of protection, in particular, an interest in protecting its software from being stolen, duplicated, licensed, used and/or sold without authorization by any compan(ies) or person(s) other than PRS.
33.

If Zaccaro is allowed to continue to use, license andlor sell the stolen software or

any unauthorized duplication thereof, PRS will be irreparably harmed. PRS has lost and continues to lose the ability to maintain exclusive use and sale of the PRS software.
34.

Since money damages are difficult to ascertain at this time, PRS does not have

any adequate remedy at law. 35. PRS will likely succeed on the merits of its claim that it has an exclusive right to

use and sell the PRS software. WHEREFORE, Plaintiff, Pharmaceutical Return Service, requests that the court: A.
B.

Enter an injunction enjoining Zaccaro from using, licensing and/or selling the PRS software; Enter an injunction enjoining Zaccaro from using, licensing and/or selling any software that is based upon or is a duplication of the PRS software; Enter an injunction enjoining Zaccaro from using, licensing and/or selling any software that uses or duplicates elements of the PRS software;

C.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 20 of 52

D.

Enter an injunction enjoining Zaccaro and Returns R' US from including the PRS software, any software that is based upon or is a duplication of the PRS software and any software that uses elements of the PRS software as part of transaction for the sale of Returns R' Us to any other entity; Enter such other relief the court deems just and appropriate.

E.

COUNT III (VIOLATION OF FEDERAL COMPUTER FRAUD AND ABUSE ACT)
36.

PRS repeats and realleges Paragraphs 1 through 30 above as if fully set forth

herein. 37. PRS operates "protected computers" within the meaning of the Computer Fraud

and Abuse Act, 18 U.S.C. 5 1030, in that PRS' computers are used in interstate commerce and communication. 18 U.S.C. 5 1030 (e)(2)(B). The Computer Fraud and Abuse Act provides for a civil cause of action against anyone who: (5)(B) intentionally accesses a protected computer without authorization, and as a result of such conduct, recklessly causes damage; or (C) intentionally accesses a protected computer without authorization, and as a result of such conduct, causes damage;

18 U.S.C. $1030(a)(5)(B) and (C).
38. Zaccaro has intentionally accessed PRS' computer system without authorization,

and as a result, has caused damage to PRS' computer system through his use of PRS' computers without authorization. 39. PRS has suffered irreparably, and continues to suffer irreparably as the PRS

software, which was copied, has been used, licensed and sold to others, including PRS' competitors. Damages will continue unless and until Zaccaro and all those to whom he has licensed or sold the PRS software are enjoined, their access to PRS' computers is completely foreclosed and any and all information which they have accessed, and any copies of the same, are recovered.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 21 of 52

40.

Though no adequate remedy at law exists in this instance because damages are

difficult to approximate, PRS has been damaged economically by Zaccaro's actions in excess of

WHEREFORE, Plaintiff, Pharmaceutical Return Service, requests that the Court:
A.

Enter a temporary andlor permanent injunction, pursuant to 18 U.S.C. §1030(g), without bond, enjoining Zaccaro, and anyone acting in concert with him or on his behalf from accessing or attempting to access any computer, of PRS; Enter an order allowing PRS through the United States Marshals to confiscate any and all computers, discs, drives, software and other related devices from Zaccaro and impound same in order to determine to what extent Zaccaro has accessed PRS' computers and taken PRS' copyrighted, confidential and proprietary information and copied the same; Enter an order requiring Zaccaro to preserve any and all evidence of his unauthorized access to PRS' computers; Enter an order requiring the return of any and all information, in whatever format saved or copied, which Zaccaro has copied, downloaded, or transmitted as a result of his unauthorized access to PRS' computers; Enter an order awarding Plaintiff compensatory damages in excess of $100,000 for Zaccaro's wrongful actions; Enter an order awarding Plaintiff punitive damages in the amount of $10 million for Zaccaro's malicious, willful and wanton conduct; and Enter an order awarding Plaintiffs its attorneys' fees and costs, and such other and further relief as this Honorable Court finds reasonable. COUNT IV fVIOLATIONS OF COMPUTER CRIME PREVENTION LAW)

B.

C.
D.

E. F.
G.

41.

PRS repeats and realleges Paragraphs 1 through 30 above as if fully set forth

herein. 42. follows: Computer Tampering. (a) A person commits the offense of computer tampering when he knowingly and without authorization of a computer's owner, as defined by Section 15-2 of this Code, or in excess of the authority granted to him: 8 The Illinois Computer Crime Prevention Law provides, in relevant part, as

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 22 of 52

***
(1) Accesses or causes to be accessed a computer or any part thereof, or a program or data;

(2) Accesses or causes to be accessed a computer or any part thereof, or a program or data, and obtains data or services;
(3) Accesses or causes to be accessed a computer or any part thereof, or a program or data, and damages or destroys the computer or alters, deletes or removes a computer program or data.

720 ILCS 5116D-3(a)
43. A civil remedy exists under the Computer Crime Prevention Law, 720 ILCS

5116D-3(c), to obtain whatever appropriate relief is necessary.
44.

In violation of the Computer Crime Prevention Law, Zaccaro (1) accessed or

caused to be accessed one or more of PRS' computers, programs and data, (2) accessed or caused to be accessed one or more of PRS' computers, programs and data, and obtained data which was contained within PRS' computer, and (3) damaged, destroyed, removed, or deleted data belonging to PRS, which was contained within PRS' computer. 45. As a result of Zaccaro's violations of the Illinois Computer Crime Prevention

Law, PRS has suffered, and continues to suffer, loss and irreparable harm, as set forth above for which no adequate remedy at law exists. WHEREFORE, Plaintiff, Pharmaceutical Return Service, respectfully requests as follows: A. Enter a temporary and/or permanent injunction, pursuant to 18 U.S.C. §1030(g), without bond, enjoining Zaccaro, and anyone acting in concert with him or on his behalf from accessing or attempting to access any computer, of PRS; Enter an order allowing PRS through the United States Marshals to confiscate any and all computers, discs, drives, software and other related devices from Zaccaro and impound same in order to determine to what extent Zaccaro has accessed PRS' computers and taken PRS' copyrighted, confidential and proprietary information and copied the same; Enter an order requiring Zaccaro to preserve any and all evidence of his unauthorized access to PRS' computers;

B.

C.

9

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 23 of 52

D.

Enter an order requiring the return of any and all information, in whatever format saved or copied, which Zaccaro has copied, downloaded, or transmitted as a result of his unauthorized access to PRS' computers; Enter an order awarding Plaintiff compensatory damages in excess of $100,000 for Zaccaro's wrongful actions; Enter an order awarding Plaintiff punitive damages in the amount of $10 million for Zaccaro's malicious, willful and wanton conduct; and Enter an order awarding Plaintiffs its attorneys' fees and costs, and such other and further relief as this Honorable Court finds reasonable.

E.
F. G.

COUNT V (VIOLATION OF ILLINOIS TRADE SECRETS ACT ZACCARO)

-

46.

PRS restates, realleges and incorporates by reference, Paragraphs 1-33 as if they

were fully set forth herein. 47. 48. The PRS software, created and owned by PRS, is a trade secret of PRS. Zaccaro misappropriated the PRS software through improper acquisition,

disclosure and/or use of the PRS software. 49. PRS has been damaged by Zaccaro's misappropriation of the PRS software.

WHEREFORE, Plaintiff, Pharmaceutical Return Service, requests that the court: A. Enter judgment for damages against Zaccaro and all of his respective employees, servants, agents, companies, licensees, distributors and persons acting in concert with him, in an amount to be proven at trial; Enter an injunction enjoining Zaccaro and all of his respective employees, servants, agents, companies, licensees, distributors and persons acting in concert with him, from using and/or selling the PRS software; Enter an injunction enjoining Zaccaro and all of his respective employees, servants, agents, companies, licensees, distributors and persons acting in concert with him, from using and/or selling any software that is based upon or is a duplication of the PRS software; Enter an injunction enjoining Zaccaro and all of his respective employees, servants, agents, companies, licensees, distributors and persons acting in concert with him, from using and/or selling any software that uses or duplicates elements of the PRS software; Award all costs and attorneys' fees to PRS; and

B.

C.

D.

E.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 24 of 52

F.

Enter such other relief the court deems just and appropriate.

COUNT VI LVIOLATION OF SECTION 43(A) OF THE LANHAM ACT 115 U S C 461125(A)j ... ZACCARO)
50.
PRS restates, realleges and incorporates by reference, Paragraphs 1-33 as if they

were fully set forth herein. 5 1. Zaccaro has misappropriated the PRS software and misrepresented it or an

unauthorized copy that is substantially similar to the PRS software or elements thereof as his own. 52. In doing so, Zaccaro has used a false designation of the origin of the software he

has used and/or sold. 53. Zaccaro has used a false designation of the origin of the software he has used

andlor sold in interstate commerce. 54. 55. Zaccaro has used and/or sold the software in connection with goods or services. The designation has caused confusion, mistake or deception as to the origin,

sponsorship or approval of Zaccaro's goods, services or commercial activities by other persons andlor entities.
56.

PRS has been damaged as a result.

WHEREFORE, Plaintiff, Pharmaceutical Return Sewice, requests that the court:
A.

Enter judgment for damages against Zaccaro for all profits he or any company owned by him has obtained resulting from any violation of 15 U.S.C. §$I 12S(a), in an amount to be proven at trial; Enter judgment for damages against Zaccaro for all other damages sustained by PRS as a result of any violation of 15 U.S.C. $51125(a), in an amount to be proven at trial; Award all costs and attorneys' fees to PRS; and Enter such other relief the court deems just and appropriate.

B.

C.

D.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 25 of 52

COUNT VII JVIOLATIONOF SECTION THE ILLINOIS DECEPTIVE TRADE PRACTICES ACT ZACCARO)
57.

PRS restates, realleges and incorporates by reference, Paragraphs 1-33 as if they

were fully set forth herein.

58.

Zaccaro has stolen the PRS software and misrepresented it or an unauthorized

copy of the PRS software or elements thereof as his own.
59.

Zaccaro has made false, misleading or deceptive statements regarding PRS'

services to several of PRS' customers.
60.

In doing so, Zaccaro has disparaged the services or business of PRS by a false or

misleading representation of fact. WHEREFORE, Plaintiff, Pharmaceutical Return Service, requests that the court:
A.

Enter an injunction enjoining Zaccaro and all of his respective employees, servants, agents, companies, licensees, distributors and persons acting in concert with him, from using and/or selling the PRS software andlor any duplication of or software resembling the PRS software; Award all costs and attorneys' fees to PRS; and Enter such other relief the court deems just and appropriate. COUNT VIII (BREACH OF FIDUCIARY DUTY -ZACCARO)

B. C.

61.

PRS restates, realleges and incorporates by reference, Paragraphs 1-33 as if they

were fully set forth herein.
62.

Zaccaro, as a former employee of PRS, owed and continues to owe PRS a

fiduciary duty to PRS.

63.

In misappropriating the PRS software or elements thereof, making an

unauthorized duplication of the PRS software, and/or selling the stolen PRS software or an unauthorized duplication, Zaccaro has breached his fiduciary duties to PRS.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 26 of 52

64. fiduciary duty.

PRS has been damaged as a direct and proximate result of Zaccaro's breach of

WHEREFORE, Plaintiff, Pharmaceutical Return Service, requests that the court:
A.

Enter judgment for damages against Zaccaro in an amount to be proven at trial; and Enter such other relief the court deems just and appropriate. JURY DEMAND

B.

Plaintiff requests a jury demand on all issues so triable. PHARMACEUTICAL RETURN SERVICE

Dated: November

$,

2005

John M Riccione William J. Serritella, Jr. Elvis D. Gonzalez Aronberg Goldgehn Davis & Garmisa Attorneys for Pharmaceutical Return Service One IBM Plaza - Suite 3000 Chicago, Illinois 6061 1 (3 12) 828-9600

Certificate Case 4:07-mc-80231-SBA of Registration
~

Document 2

Filed 10/01/2007

Page 27 of 52

This Certificate issued under the seal of the Cnovri~ht --r,--0-Office in accordancewith title 17, United States Code, attests that registration has been made for the work identified below. The information on this certificate has been made a part of the Copyright Office records.
~~~~~

Q

-

&Q &
Copyrights, United States of America

Wm

8. w 27 .

--.-

NAMZOPAWHOR T

Yen Bon
AMHW8 NATIONAWFY OR DOMICILE
-=*MI

DA

W r *t admm a OIrait r

valndllbrkn.

Rhh b n,

hr -1 forr*pr(
.. I* -

.an-n.

NOTE

w
souc*NAMCOPAUIROR

0 v* 6 Ho

W M 7 A I I I A U W O U ICWR1IVIW)WTO IliEWWK I .L-*.L O"*BN. I).r*CIu OYe86Ho

wiinoss
Aloy**r

O\DWW~y~D12,

,,

11*-*11

Ur * l h . k .hpCd

b

~hmuautlori-~nc
W r * admm b hwwk I l

DATg Yrr AWllOR 8 NAnONALrrY OR DOMICILE
-*Elll

diOCmmTBANDDLATR~ Y W M
OY*BWD OYULlHo

valnrd.lbrhlrn1

wMlnBAm8CDMUWM)PIm

k p r n #

rn Y*
SoUraCodr
NAMTMAWHOR
# .

mwOilK

d H

0N . Rulqorr NAlllRCOPAUlHOR(I~D ~ * * n b . N n o f N n u l ~ t y h n * . a r n r ( r I ~ ~ ~ ~ T

*LIL~ nrL

wbrm hldm hn,
IPO.

>- - --, * .
ghr
CIIk
--.Oh

!&m&w"DrpaT
W r hr v ln ar &?

L.urt 1

AUlHOR S NATIONALIT4 OR DOMICILE
h**

rm
~YIIN

W M WORK U W W S EWIUWllON'ID THL l n B A I I l b

x4","Na -*0

0 Y8 e

b R w b p d I Y A n l l u O P A ~~ h n b a n ~ a a n ~ ~ ~ a ~ l l o r ~ r ~ 9 ~ p ~ d r * l v

9

CWld DIIIKIW.

* -

UY* ON. OYION.

-

*C.c.IIb

n-u

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 28 of 52

Amended by C 0 frao !fme call to Brlan Sodlkoff on September 5 , 2095

W I N E D BY cHCxmW

mwm

ONLY D Q N O T W R l l E U O M ~ L H l EF Y O U W f e D ~ W I C I L U K A E E P A I U R I CMTWAllOIw
? l U V K I U 8 R C G g l R A T N ) W H r ~ f a I b a w o lo f a m r h . ~ d l b u w o l l l *r9bmnudrmtaCawlll(Mlol, O Y a EN. UF-r Ya + 1 1 r o & r n g l a ~ o n b W f l ( ~ ~ b a r 1 a O T b u ~ & i h * p b M d ~ d a v o l L ~ ~ m r p l b M d h b O h m h . ~ ~ ~ k h . l h a r ~ c l s . r n
cOlbu8dm@rmold&nutrk*nI*w6mluqpbuna Upm-u Y n w -Ud*n*.NumhrV

5
text
N Y I I ?I 1 Y

Ywdlda*mV

s m r a u , w ~ m ~ n m m ~ m New and revised ~ ~ ~ k p progrmnung

bU * N M I N W ~ O w ~ M ~ * u a d l * s r r l * . b * r ~ m * l u o h W.rrdoonnC(aM m

-- space deleted

-

f

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 29 of 52

EXHIBIT C

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 30 of 52

Walch, Matthew (CH)
From: Sent: To: Subject:

Walch, Matthew (CH) Monday, August 06,2007 4 5 6 PM 'Chico Myers'
RE: Zaccaro Subpoena; EXP Response

Attachments: dr mww zaccaro sample screen outIine(961679_2_CH).DOC

Dear Mr. Myers: Following up on our conversation today, I have attached a list of representative screen print information that we are looking for in addition to the reports that you have already provided. Please contact me if you have any questions regarding these descriptions or need further clarification on what we are looking for. Thanks.
Matthew W. Walch LATHAM a WATKINS LLP Sears Tower, Suite 5800 233 South Wacker Drive Chicago, IL 60606 Direct Dial: +1.312.876.7603 Fax: +1.312.993.9767 Email: [email protected] http:/lwww.lw.com

From: Chico Myers [mailto:[email protected]]

Sent:Thursday, July 26, 2007 3:57 PM
To: Walch, Matthew (CH) Cc: Alexander P. Myers Subject: Zaccaro Subpoena; EXP Response Dear Mr. Walch: This e-mail follows our conversation of a few minutes ago. Attached is the EXP response to the Subpoena along with 11 reports generated from the EXP software. Please review and contact me at your earliest convenience. Chico Chico Myers Myers, Hawley, Morley, Myers & McDonnell 166 Main Street Los Altos, CA 94022 Tel. 650-948-1600 Fax. 650-949-3581 e-mail: [email protected]

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 31 of 52

SAMPLE SCREEN PRINTS
1.

Facility and/or Wholesaler Information
This screen contains information about the pharmacy, facility or wholesaler being processed, including Name, Address, City, State, Zip, Phone Number, Fax Numbers, Contact Names, Contact Titles, DEA Number and may contain additional fields

2.

Manufacturer Direct Account Numbers
Pharmacies purchase certain items direct from the manufacturer. These direct account numbers may be identified and collected in the software. This screen may contain the manufacturer's information and the direct account number used by the pharmacy.

Lists the JobsIOrders that were processed or are going to be processed. Usually identified by a JobIOrder or Customer Number.

4.

Data Entry
This is where processors spend most of their time. At this screen, NDC number, expiration date, lot number, cost (perhaps) and/or quantity may be entered or collected either by 10 key data entry or scanning. May display information about the drug item including Description, Dosage Form, Package Size, Manufacturer, etc.

5.

Reports
Screen where the user would select the reports to be printed.

6.

Manufacturer Information
This will include the names of pharmaceutical manufacturers and may also include a list of companies where the expired goods will be returned. It may also include name, address, phone numbers, fax numbers, and other contact info.

7.

Manufacturer Outdate Policies
This is the screen where the returns company may enter the policies that are established by the manufacturer. Included here may be details like how many months past expiration are acceptable for return, does the manufacturer accept partial containers, do they accept indated product, etc.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 32 of 52

8.

ManufacturerIRGA Return Instructions
Each manufacturer has specific instructions to follow when a packing list is printed by their processing software. These instructions may tell the employee what to do with the product and this information appears on the packing list.

9.

Drug Information
Each company uses some type of drug database either provided by Micromedex (Redbook), First Data Bank and others. This screen contains that drug information including NDC number, drug name, package size, pricing, dosage form, previous NDC number, DEA Number (if applicable) and other fields.

10.

Disposal Codes
This is the screen where a company may identify their disposal codes that are applied to drugs in their drug database.

When an item is deleted by a user, the item may no longer be seen but there may be a place holder for that item depending on the nature of the program. Running this feature may remove that space and then reorder the lines. 12.

Create MergeIBackup File
This feature relates to backing up data that has been entered by one person on a nonnetworked computer. Data may also need to be merged if multiple entries are made.

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 33 of 52

EXHIBIT D

Case 4:07-mc-80231-SBA

Document 2
Document 61

Filed 10/01/2007
Filed 0 9 / 2 7 / 7 9
'.
4

Page 34 of 52

Page 1 of 19

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN OlVlSlON PHARMACEU'TICAL INVENTORIES, INC., d/b/a PHARMACEUTICAL RETlJRNS SERVICE,

1
) ) ) ) )

Case No. 05 C 6483 Judge Cottschall Magistrate Judgc Ashmaa

V.

1

MICHAEL ZACCARO, an Individual, and RETURNS R US, INCORPORATED d/b/a
PHARMA LOGISTICS, LTD.
Defendant.

1 1 1 1
)

1
RESTRICTING ORDE8
-

This matter ha'vTn<'corne befdre the Courton ttie scparate motions of Plain~iff

-

Pharmaceutical Inventories, Inc. d/b/a Pharmaceutical Returns Service ("PRS")and Defendant
Michael Zuccaro ("Mr. Zaccaro") for entry of a restricting order, the Court hereby holds pursuant

to Fed. R. Civ. P. 26(c) and Local Rule 26.2 that certain documents or other information or materials in thc encaptioned lawsuit, that have been or will be exchenged in discovery or otherwise, are confidential andlor proprietary or contain confidential andfor proprietary information. These documents, materials and information are properly usable by the other parties solely in connection with such lawsuit and should otherwise be kept and remain confidcnlial through the course of the litigation and thereafter and not be used for any other

purpose. The following rtstriclive provisions govern certain documents or other information and
materials that are confidcnlial andlor proprietary, or that cantaia confiden~ial and/or proprietary information as defined below, be, and hereby arc, imposed upon all discovery and litigation proceedings described herein, whether such discovery and litigation proceedings be directed at a

' *'

.

Case 4:07-mc-80231-SBA
853

.

Document 2
Document 61

Filed 10/01/2007

Page 35 of 52

Filed 09/27/2

P"6
\.

Page

*

Of

l9

party to the litigation or at 'any other petson or entity. The parties have agreed on this form of the

Restricting Order.

I.
1. I.

DEFINITIONS
When used herein, the word "documenl" means all written, recorded, or

graphic matter whatever, including but not Limited to interrogatory answers, responses to requests for admission, docunlents produced in response to document rcquests or voluntarily, including writings, drawings, graphs, charts, maps, recordings or other materials within the contenlplalion of Fed. R. Civ. P. 34, deposition testimony, deposition transcripts and exhibits,

trial exhibits, hearing or trial transcripts, any portion or summary of any of the foregoing, and
any other papers that quote from, reflect, reveal or summarize any of the foregoing.
1.2.

"Confidential-Information" means such informatio~i is used by a party that

-

-

in, or pertaining to, its business or its personal dealings, which information is not generally

known and which that party would normally not reveal to third parlies or, if disclosed, would require such third parties to maintain in confidence. Confidential Information includes, but is not
limited to, the following:

(a)
(b)

Documentation relating to copyrights owned by the parties to this action, and any assignments of the copyrights; Documents relating to licenses of any of the exclusive rights in the parties' Software or Source Code;

(c)
1.3.

Other private, confidential andor proprietary information that the parties believe in good faith should be kept Confidential,

When used herein, "Confidential Material" means any and all docwnmts

or things that contain, reflect or reveal Confidential Information. 1.4. When used herein, "Highly Confidential Information" means par~icularly

sensitive technical, financial, and business documents, information, and material, both business

Case 4:07-mc-80231-SBA

Document 2

Filed 10/01/2007

Page 36 of 52

Case 1 :05-cv-06"53 Document 61 1.

Filed

6

Page 3 of 19

and personal that relate to proprietary information that the producing party reasonably brlicvcs is of such nature and character that disclosure of such information would be harmful to the producing party. Highly Confidential Information includes, but is not limited to, the following: (a)
(b)

The pharmaceutical returns processing software utilizcd by Returns " R Us, Inc., d/b/a P h m a Logistics ('the Pharma Logistics Software")' The pharmaceutical returns processing sohare utilized by PRS ("the P S R Software"); Documentation related to any modifications to the Pharma Logistics Software and/or (he PRS Software;
All design documentation for the Pharma Logistics Software and the PRS

(c) (d)
(e)

Software;

Ail current and prior versions of the Pharma Logistics Software source code and the PRS Software source code; - ------- - -- - -- - - - - -- . Documentation related to work performed on the Pharma Logistics (f) Software;
- - a

(g)

The parties' customer files;

(h)

Files on the hard drives of the parties' personal, home and business computers, and DeMars' business computers, to the extent that lhey contain any of the foregoing information;
Income tax returns;
When used herein, "Highly Confidential Material" means m y and dl

(i)
l .S.

documents or things that contain, reflect or reveal Highly Conftdential Information.

I .6.

When used herein, the term "lawsuit" shall include the abvecaptioned

action, and any ancillary proceedings such as those brought in connection with subpoenas to non-parties, including without limitation, motions to compel or motions for protective ordew by

or in connection with subpoenns to non-parties.

Case 4:07-mc-80231-SBA
Case 1:05cv-0 453

.

Document 2
Document 61

Filed 10/01/2007
Filed
"6

Page 37 of 52

7

Page 4 of 19

2.

USE OF [NFORMATJON AND MATERIAL

All Confidenrial and Highly Confidential lnfomation or Material discovered or produced in this lawsuit shall be used by the receiving party solely for the prosecution and/or defense of the lawsuit and for purposes of evaluation of settlement and for settlement negotiations, and not for any other purpose, including without limitation, any competitive or business purpose. Nothing contained herein shall restrict or prevent any party from disclosing or otherwise using any information or documents not obtained under this Stipulation, in which case

this Stipulation shall not apply lo such information or documents
3.

1)ESICNATlON OF CONFIDENTIAL OR HIGHLY CONFIDENTIAL INFORMATION OR MATERIAL

Standard Desinnation Procedure. Confidential Infonation and Makrial - - -- - - - - . - - - - disclosed or discovered in this lawsuit may be designakd by thc counsel of the disclosing party

3.1.

- -- -

as such and thus made subject to the limitations of this Order. Except for Confidential Information disclosed during the course of a deposition or hearing in this lawsuit, Confidential Information shall be so designated in writing by the counsel for the party making the designation prior to or at the time of the disclosure of such informarion. Confidential Material sMl be so designated by stamping or otherwise placing on the face of the documnt(s) the legend "[PRS or ZACCARO or PHARMA LOOISTICS or THIRD-PARTY] CONFIDENTIAL

MFORMATION: SUBJECT TO RESTRlCTMG ORDER." All things containing Confidential
Information that cannot be conveniently labeled shall be designekd as Confidential by letter to the receiving party,

3.2.

Hi~hlv Confidential Information. A party may further designate certain

categories of Confidential Information, specified in p q r a p h 1.4 above, os Highly Confiden~ial Information if the counsel for the disclosing party in good faith believes that such a designation

C '

.

Case 4:07-mc-80231-SBA
Case 1 :05-cv-0 93
..

Document 2

Filed 10/01/2007

Page 38 of 52

r

Document 61 Filed 091271 % Page 5 of 19

T.

is necessary to prevent the party from potentially incurring seriow economic, competilive injury,

or an unwarranted invasion of privacy. Highly Confidential Material disclosed or discovered in

this lawsuit may be designated by the counsel of the disclosing party as such and thus made
subject to the limitations of this Order. Highly Confidential Information shall b so designated e in writing. Highly Confidential Material shall be so designated by stamping or otherwise placing on the face of the document(s) the legend "[PRS or ZACCARO or PFlARMA LOGISTICS or

THIRD-PARTY] HIGHLY CONFIDENTIAL:ATTORNEYS' EYES ONLY ." All things
containing Highly Confidential lnformation lhat cannot be conveniently labeled shall be designated as Highly Confidentialby letter to the receiving pany.
3.3.

Copies and Derivative Items. Any copy made of any document or thing so

designated, or any d&umentor

thing created (c.g., any abstracl, summary, rncrnorandurn or

exhibit) containing information designated pursuant to this Order shall bear on its face the nppropriate legend specified in paragraphs 3. I and 3.2. All things containing Confidential or

f+ighlyConfidential lnformation that cannot be conveniently labeled shall be designated as such
by letter to rhe receiving party.
3.4.

Inswections. If, during the course of discovery in this action, a party

hereto, or its rcprescntative, is authorized to inspect another parly's facilities, any documents or things generated as a consequence of any such inspection shall be deemed by the inspecting

party to be Highly Confidential lnformation and shall be treated as such. 3.5.
Desinnation of Information Disclosed durinn Depositions or Hearings,

Confidential or Highly Confidential Information disclosed during the course of a deposition or hearing in this lawsuit, including the use of documents or materials designated as Confidential or Highly Confidential at any depositions or hearing, shall be so designated by advising other

Case 4:07-mc-80231-SBA
Case 1 :05-cv-O(983 (..

Document 2
Document 61

Filed 10/01/2007
Filed 0912712 Q6

Page 39 of 52

e

Page 6 of 19

parties and the court reporter at the conclusion of such deposition or hearing that the information

disclosed is confidential and that the transcript, or s portion thereof, should be treated as Confidential or Highly Confidential under this Order and by instructing the courl reporter at rhe conclusion of the deposition or hearing to note the appropriate designation on the transcript. Further, a party may also designate a transcript, or porlion thereof, a Confidential or Highly s Confidential by advising the other parties and the court reporter, in writing, of such designation within 30 days after receipt of the transcript and instructing the court reporter to add the appropriate legend L the transcript. During such 30-day period, all deposition and hearing o transcripts shall be treated as Highly Confidential under paragraph 4 herein.

3-6.

Court filings. Documents containing Confidential or Highly Confidential

lnforrnation or- ater rial shall NOT bef led with the Clerk of Court. Such documents requiring the Court's review shall be submitted to chambers in cumera in a sealed envelope bearing Ge caption of the case, case number, the title of the motion or response to which the submitted confidential information perlains, and the name and telephone number of counsel submitting the documents. A redacted copy of the pleading shall be filed w i h the Clerk of Coun for the record. The parties are ordered to retain copies of all documents containing Confidential or Highly Confidential Information or Material that are provided in discovery under this Order. The disclosing party shall maintain the original documents intact for any further review.
4.
4.1.

TWATMENT OF CONFIDENTIAL AND HIGHLY CONFIDENTIAL INFORMATlON AND MATERIAL
Confidential Information and Material. The only individuals who shall be

permitted to learn of Confidential Information or to view another party's or non-party's Confidential Material produced pursuant to this Order or to learn about their contents or

Case 4:07-mc-80231-SBA

,

1 '

*

*

Document 2

Filed 10/01/2007
Filed 09127/2p

Page 40 of 52

Document 61

Page 7 of 19

substance, other than the person or entity producing or providing such Confidential Infomation
or Material and the other parties to the lawsuit, are:
4 I . I. Any trial, appellate, or magistrate judge of any Court presiding over the

lawsui~ any proceeding ancillary to the lawsuit, and any clerk, secreiary, reporter or other or personnel employed by such Court; 4.1.2. Outside and inside legal counsel for the parties who are participating in the prosecution or defense of [he lawsuit, and legal assistants, clerical personnel, secretaries and other regular or temporary employees or agents working under the direction of such attorneys
and to whom it is necessary that Confidential Information or Material be disclosed;
4. I 3 . Stenographic reporters, copying services, and imaging services in the

lawsuit; 4.1.4. Independent consultants or experts advising h e panies' outside legal counsel concerning the lawsuit (and only when essential to the experts' or consultants' activities

in connection therewith), including any person designated or to be designated as a controlled

expert witness in the lawsuit;
4.1 ' 5 . Mock jurors, focus group members, and the like selected by counsel or trial consultants or jury consultants in preparation for proceedings in the lawsuit;
4.1.6. Employees of each party who have a legitimate need to know or review

the Confidential Information or Material in connection with this lawsuit;
4.1.7. Any former employee of the designating party or any former cmployee of

such party who was invoivcd with the matters the itcm is directed to at the time the events to
which the i tern is dimled occurred.

Case 4:07-mc-80231-SBA
,

Document 2
Document 61

Filed 10/01/2007

Page 41 of 52

"

I '

v

8

Case 1:05cv-06493

<-

Filed

4.1.8. Any individual who authored or received the item prior to its production to
the receiving p r y at.

4.2.
shall be

Highly Confidential Information and Malerial. The only individuals who

to learn of Highly Confidential lnfbrmation or to view another party's or non-

party's Highly Confidential Material produced pursuant to this Order or to learn about their
contents or substance, other than the person or entity producing or providing such Highly

Confidential Information or Material, are:
4.2.1

.

Persons described in subparagraph 4.1.1 ;

4.2.2. Outside legal counsel for the parties who are participating in the

prosecurion or defense of the lawsuit, and legal assistants, clerical personnel, secretaries and

other regular or temporary employees or agents working under the direction of such aitomeys
and ro whom it is necessary that Highly Confidential Information or Material bc disclosed;
4.2.3. Persons described in subpangraph 4.1.3:

4.2.4. Persons described in subparagraph 4.1.4;
4.2.5. Any individual who authored or received the item prior to its production to

the receiving party.
4.3.

Except for the persons authorized by this paragraph 4, no other employees,

agenls or representatives of any party, nor any other persons or entkics, shall be permitted access
to any Confidential or Highly Confidential Infornolion or Material.

4.4.

All persons to whom Confidential or Highly Confidential Information or

Material are disclosed or given shall maintain the wnfidenliality of samc, subject to the terms of

this Order.

Case 4:07-mc-80231-SBA
Case 1 :05-cv-069.43

Document 2
Dowrnent 61

Filed 10/01/2007

Page 42 of 52

Filed 0 9 1 2 7 1 2 ~ Page 9 of 19

(.
4.5.

Except for persons described in subparagraphs 4.1.1,4.1.2,4.1.3,4.1.6,

4.1.8, 4.2.1 .4.2.2,4.2.3, and 4.2.5 above, all persons to whom any Confidential or Highly Cofifidential Information or Material are disclosed