GIC Private Limited v. Qualcomm Incorporated

• Court: District Court, S.D. California
• Decided: February 4, 2020
• Docket: 3:18-cv-00463
• Status: Unknown

Opinion

8 UNITED STATES DISTRICT COURT

9 SOUTHERN DISTRICT OF CALIFORNIA

11 GIC PRIVATE, LIMITED, Case No. 18-cv-00463-BEN-MSB

12 Plaintiff, ORDER GRANTING NON-PARTIES 13 APPLE INC.; COMPAL ELECTRONICS, INC.; FIH MOBILE LTD.; HON HAI 14 v. PRECISION INDUSTRY CO., LTD.; 15 PEGATRON CORPORATION; AND WISTRON CORPORATION’S 16 QUALCOMM INCORPORATED, ASSENTED-TO MOTION TO 17 Defendant. SUPPLEMENT THE PROTECTIVE ORDER [ECF NO. 71] 18

19 20 WHEREAS Section 3.5 of the Protective Order in this action (Docket No. 30- 21 1) states that its provisions are without prejudice to the right of any party to seek 22 further or additional protection of any Discovery Material or to modify the 23 Protective Order; and, 24 WHEREAS Section 10.1 of the Protective Order states that its provisions 25 should not be construed as prohibiting a non-party from seeking additional 26 protections for its confidential materials; and 27 WHEREAS now before the Court is Non-Parties Apple Inc. (“Apple”), 1 Hai”), FIH Mobile Ltd. (“FIH”), Pegatron Corporation (“Pegatron”), and Wistron 2 Corporation’s (“Wistron,” and collectively, the “CMs”) Assented-To Motion to 3 Supplement the Protective Order; 4 WHEREFORE, IT IS HEREBY ORDERED, that the terms of the Protective 5 Order apply to “APPLE PROTECTED MATERIAL” and “CM PROTECTED 6 MATERIAL” (as defined below), except as modified below: 7 1. DEFINITIONS 8 1.1. “APPLE MATERIAL”: any Disclosure or Discovery Materials 9 produced by, deemed produced by, reproduced on behalf of, or with the consent of 10 Apple, or obtained from Apple witnesses. For such material, the Apple will be 11 deemed a “Producing Party” as that term is used here and in the Protective Order. 12 1.2. “CM MATERIAL”: any Disclosure or Discovery Materials originally 13 produced by, deemed produced by, reproduced on behalf of, or with the consent of 14 Compal, Hon Hai, FIH, Pegatron, or Wistron, or obtained from Compal, Hon Hai, 15 FIH, Pegatron, or Wistron witnesses. For such material, the respective CM will be 16 deemed a “Producing Party” as that term is used here and in the Protective Order. 17 1.3. “APPLE CONFIDENTIAL” Information or Items: any APPLE 18 MATERIAL previously designated by Apple as CONFIDENTIAL, APPLE 19 CONFIDENTIAL, SD CAL CONFIDENTIAL, or any variant of 20 “CONFIDENTIAL” in the FTC Litigation, Apple Litigation, CM Litigation, or ITC 21 Litigation. 22 1.4. “APPLE HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” 23 Information or Items: any APPLE MATERIAL previously designated by Apple as 24 HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY, APPLE HIGHLY 25 CONFIDENTIAL – ATTORNEYS’ EYES ONLY, SD CAL HIGHLY 26 CONFIDENTIAL – ATTORNEYS’ EYES ONLY, CONFIDENTIAL BUSINESS 27 INFORMATION, or any variant of “HIGHLY CONFIDENTIAL” in the FTC 1 1.5. “APPLE PROTECTED MATERIAL”: any APPLE CONFIDENTIAL 2 or APPLE HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY Information 3 or Items. 4 1.6. “CM CONFIDENTIAL” Information or Items: any CM MATERIAL 5 previously designated by Compal, Hon Hai, FIH, Pegatron, or Wistron as 6 CONFIDENTIAL, COMPAL CONFIDENTIAL, FOXCONN CONFIDENTIAL, 7 PEGATRON CONFIDENTIAL, WISTRON CONFIDENTIAL, SD CAL 8 CONFIDENTIAL, or any variant of “CONFIDENTIAL” in the FTC Litigation, 9 Apple Litigation, CM Litigation, or ITC Litigation. 10 1.7. “CM HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” 11 Information or Items: any CM MATERIAL previously designated as HIGHLY 12 CONFIDENTIAL – ATTORNEYS’ EYES ONLY, COMPAL HIGHLY 13 CONFIDENTIAL – ATTORNEYS’ EYES ONLY, FOXCONN HIGHLY 14 CONFIDENTIAL – ATTORNEYS’ EYES ONLY, PEGATRON HIGHLY 15 CONFIDENTIAL – ATTORNEYS’ EYES ONLY, WISTRON HIGHLY 16 CONFIDENTIAL – ATTORNEYS’ EYES ONLY, or any variant of “HIGHLY 17 CONFIDENTIAL” in the FTC Litigation, Apple Litigation, CM Litigation, or ITC 18 Litigation. 19 1.8. “CM PROTECTED MATERIAL”: any CM CONFIDENTIAL or CM 20 HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY Information or Items. 21 1.9. “Outside Counsel of Record”: attorneys who are not employees of a 22 Party to this Action but are retained to represent or advise a Party in connection with 23 this Action and have entered an appearance on behalf of that Party in this Action, as 24 well as other attorneys or support staff employed by the same firm as one of the 25 attorneys who has entered an appearance on behalf of one of the Parties in this 26 Action, to whom it is reasonably necessary to disclose the information for this 27 Action. 1 2. ACCESS TO AND USE OF PROTECTED MATERIAL 2 2.1. Confidential Material. Except as modified herein, APPLE 3 CONFIDENTIAL and CM CONFIDENTIAL Information and Items shall be treated 4 in accordance with the provision of the Protective Order that govern the treatment of 5 CONFIDENTIAL Information and Items. 6 2.2. Disclosure of APPLE CONFIDENTIAL or CM CONFIDENTIAL 7 Information or Items. Unless otherwise ordered by the Court or permitted in writing 8 by the Designating Party, a Receiving Party may disclose any Information or Item 9 designated APPLE CONFIDENTIAL or CM CONFIDENTIAL only to: 10 (a) the Receiving Party’s Outside Counsel of Record in this action, 11 as well as employees of said Outside Counsel of Record, and any copying or clerical 12 litigation support services working at the direction of such Outside Counsel of 13 Record or employees thereof (1) who do not provide commercial advice (as opposed 14 to legal advice) to the Receiving Party and (2) to whom it is reasonably necessary to 15 disclose the information for this Action; 16 (b) five (5) or fewer House Counsel or other agreed-upon Party 17 representatives identified and agreed upon between the Party, on one hand, and 18 Apple (for APPLE CONFIDENTIAL Information or Items) or Compal, Hon Hai, 19 FIH, Pegatron, and/or Wistron (for CM CONFIDENTIAL Information or Items 20 respectively) on the other hand, prior to any disclosure, (1) to whom disclosure is 21 reasonably necessary for this Action, (2) who are not involved in competitive 22 decision- making (as opposed to legal advice), as defined by U.S. Steel v. United 23 States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), on behalf of a Party, or a 24 competitor of a Party, relating to the cellular industry, and (3) who have signed the 25 “Acknowledgment and Agreement to Be Bound” (Exhibit A), as well as their 26 support staff to whom disclosure is reasonably necessary, provided that such support 27 staff are not involved in competitive decision-making and have signed the 1 (c) experts (as defined in the Protective Order) retained by the 2 Receiving Party to whom disclosure is reasonably necessary for this litigation 3 provided that (1) such Expert has signed the “Acknowledgment and Agreement to 4 Be Bound” (Exhibit A); (2) such Expert has no involvement in competitive 5 decision-making (as defined by U.S. Steel v. United States, 730 F.2d 1465, 1468 n.3 6 (Fed. Cir. 1984)) for the Receiving Party; (3) to the extent required by U.S. 7 government export control and economic sanctions laws, including the U.S. Export 8 Administration Regulations, such Expert accesses the Protected Material in the 9 United States only, and does not transport such Protected Material to or access them 10 from any foreign jurisdiction; and (4) no unresolved objections to such disclosure 11 exist after proper notice has been given to all Parties as set forth in Section 7.6 of the 12 Protective Order and Section 2.5 of this Supplemental Protective Order; 13 (d) professional jury or trial consultants, mock jurors, and 14 Professional Vendors to whom disclosure is reasonably necessary for this Action 15 and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit 16 A); 17 (e) the Court and its personnel; 18 (f) court reporters and their staff to whom disclosure is reasonably 19 necessary for this Action and who have signed the “Acknowledgment and 20 Agreement to Be Bound” (Exhibit A); 21 (g) during their testimony or in preparation for their testimony, 22 witnesses in this Action and their counsel to whom disclosure is reasonably 23 necessary and who have signed the “Acknowledgment and Agreement to Be 24 Bound” (Exhibit A), unless otherwise agreed by the Designating Party or ordered by 25 the Court. Such disclosure may only occur for the purpose of assisting the 26 preparation or examination of the witness; 27 1 (h) the Designating Party or its employees, the author or recipient of 2 a document containing the information, or a custodian or other person who 3 otherwise possessed or knew the information; 4 (i) any mediator who is assigned to hear this Action, and his or her 5 staff, subject to the agreement to maintain confidentiality to the same degree as 6 required by the Protective Order; and 7 (j) any other person upon Order of the Court. 8 2.3. Highly Confidential Material. Except as modified herein, APPLE 9 HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY and CM 10 CONFIDENTIAL – ATTORNEYS’ EYES ONLY Information and Items shall be 11 treated in accordance with the provision of the Protective Order that govern the 12 treatment of HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY 13 Information and Items. 14 2.4. Disclosure of APPLE HIGHLY CONFIDENTIAL – ATTORNEYS’ 15 EYES ONLY or CM HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY 16 Information or Items. Unless otherwise ordered by the Court or permitted in writing 17 by the Designating Party, a Receiving Party may disclose any Information or Item 18 designated APPLE HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY or 19 CM HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY only to: 20 (a) the Receiving Party’s Outside Counsel of Record in this Action, 21 as well as employees of said Outside Counsel of Record, and any copying or clerical 22 litigation support services working at the direction of such Outside Counsel of 23 Record or employees thereof (1) who are not involved in competitive decision- 24 making, as defined by U.S. Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed. 25 Cir. 1984), (as opposed to legal advice) on behalf of a Party or a competitor of a 26 Party relating to the cellular industry, and (2) to whom it is reasonably necessary to 27 disclose the information for this litigation; 1 (b) experts (as defined in the Protective Order) retained by the 2 Receiving Party to whom disclosure is reasonably necessary for this litigation 3 provided that (1) such Expert has signed the “Acknowledgment and Agreement to 4 Be Bound” (Exhibit A); (2) such Expert has no involvement in competitive 5 decision-making (as defined by U.S. Steel v. United States, 730 F.2d 1465, 1468 n.3 6 (Fed. Cir. 1984)) for the Receiving Party; (3) to the extent required by U.S. 7 government export control and economic sanctions laws, including the U.S. Export 8 Administration Regulations, such Expert accesses the Protected Material in the 9 United States only, and does not transport such Protected Material to or access them 10 from any foreign jurisdiction; and (4) no unresolved objections to such disclosure 11 exist after proper notice has been given to all Parties as set forth in Section 7.6 of the 12 Protective Order and Section 2.5 of this Supplemental Protective Order; 13 (c) professional jury or trial consultants, mock jurors, and 14 Professional Vendors to whom disclosure is reasonably necessary for this Action 15 and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit 16 A); 17 (d) the Court and its personnel; 18 (e) court reporters and their staff to whom disclosure is reasonably 19 necessary for this litigation and who have signed the “Acknowledgment and 20 Agreement to Be Bound” (Exhibit A) 21 (f) the Designating Party or its employees, the author or recipient of 22 a document containing the information, or a custodian or other person who 23 otherwise possessed or knew the information; 24 (g) any mediator who is assigned to hear this Action, and his or her 25 staff, subject to the agreement to maintain confidentiality to the same degree as 26 required by the Protective Order; and 27 (h) any other person upon Order of the Court. 1 2.5. Procedures for Approving or Objecting to Disclosures of Protected 2 Material to Experts. 3 (a) Unless otherwise ordered by the Court or agreed to in writing by 4 the Designating Party, prior to disclosing any APPLE PROTECTED MATERIAL 5 or CM PROTECTED MATERIAL to any Expert who is or has been, within five 6 years prior to the disclosure, employed or retained by Qualcomm, by a Qualcomm 7 customer or competitor, or who anticipates becoming employed or retained by 8 Qualcomm or a Qualcomm customer or competitor, or who is or has been, within 9 five years prior to the disclosure, employed or retained by Apple or a CM, by an 10 Apple or CM customer or competitor, or who anticipates becoming employed or 11 retained by Apple, a CM, or an Apple or CM customer or competitor (referenced 12 below as “Person”), the Party seeking to disclose such APPLE PROTECTED 13 MATERIAL or CM PROTECTED MATERIAL first must make a written request to 14 the Designating Party that: 15 (i) sets forth the full name of the Expert, the city and state of 16 his or her residence, and his or her country of citizenship, and 17 (ii) states the present employer and the title of the Person; 18 (iii) for any Expert, includes (a) an up-to-date curriculum vitae 19 of the Person (including the Person’s name and business/professional title and 20 business address); (b) any previous or current relationship (personal or professional) 21 with Qualcomm, any Qualcomm customer, licensee or competitor, Apple, any CM, 22 any Apple customer, licensee, or competitor, or any CM customer, licensee, or 23 competitor, including direct relationships and relationships through entities owned 24 or controlled by the Person, including but not limited to an identification of any 25 individual or entity with or for whom the Person is employed or to whom the person 26 provides consulting services relating to the design, development, operation, or 27 patenting of cellular baseband chipsets, cellular technology, cellular products or 1 assets relating to cellular baseband chipsets, cellular technology, cellular products or 2 cellular subscriber services; (c) a list of other cases in which the Person has testified 3 (at trial or deposition) within the last five (5) years; (d) a list of all companies by 4 which the Person has been employed within the last four (4) years, the dates of the 5 employment, and a brief description of the subject matter of the employment; and 6 (e) an identification of all pending patent applications on which the Person is named 7 as an inventor, in which the Person has any ownership interest, or as to which the 8 Person has had or anticipates in the future any involvement in advising on, 9 consulting on, preparing, prosecuting, drafting, editing, amending, or otherwise 10 affecting the scope of the claims. 11 (b) Further, the Party seeking to disclose Protected Material of 12 another Producing Party shall provide to the other Parties and to the Producing Party 13 such other information regarding the Person’s professional activities reasonably 14 requested by the Producing Party for it to evaluate whether good cause exists to 15 object to the disclosure of Protected Material to the Person. During the pendency of 16 and for a period of two (2) years after the final resolution of these Actions, including 17 all appeals, the Party seeking to disclose Protected Material shall immediately 18 provide written notice of any change with respect to the Person’s involvement in the 19 design, development, operation or patenting of cellular baseband chipsets, cellular 20 technology, cellular products or cellular subscriber services, or the acquisition of 21 intellectual property assets relating to cellular baseband chipsets, cellular 22 technology, cellular products or cellular subscriber services. 23 (c) A Party that makes a request and provides the information 24 specified in Sections 2.5(a) and 2.5(b) may disclose the subject Protected Material to 25 the identified Person unless, within seven (7) days of delivering the request and 26 providing all the information required to be disclosed by this section, the Party 27 receives a written objection from the Designating Party. Any such objection must be 1 “good cause” shall include an objectively reasonable concern that the Person will, 2 advertently or inadvertently, use or disclose Protected Materials in a way or ways 3 that are inconsistent with the provisions contained in the Protective Order. In the 4 absence of an objection at the end of the seven (7) day period, the Person shall be 5 deemed approved under the Protective Order. There shall be no disclosure of 6 Protected Material to the Person prior to expiration of this seven (7) day period. 7 (d) A Party that receives a timely written objection must meet and 8 confer with the Designating Party (through direct voice-to-voice dialogue; other 9 forms of communication are not sufficient) to try to resolve the matter by agreement 10 within seven (7) days of the written objection. If no agreement is reached, the Party 11 seeking to make the disclosure to the Person may file a motion as provided in Civil 12 Local Rule 7.1 seeking permission from the Court to do so. Any such motion must 13 describe the circumstances with specificity, set forth in detail the reasons why the 14 disclosure to the Person is reasonably necessary, assess the risk of harm that the 15 disclosure would entail, and suggest any additional means that could be used to 16 reduce that risk. In addition, any such motion must be accompanied by a competent 17 declaration describing the Parties’ efforts to resolve the matter by agreement (i.e., 18 the extent and the content of the meet and confer discussions) and setting forth the 19 reasons advanced by the Designating Party for its refusal to approve the disclosure. 20 (e) In any such proceeding, the Party opposing disclosure to the 21 Person shall bear the burden of proving that the risk of harm that the disclosure 22 would entail (under the safeguards proposed) outweighs the Receiving Party’s need 23 to disclose the Protected Material to the relevant Person. 24 3. PROSECUTION/DEVELOPMENT BAR 25 3.1. Patent Prosecution Bar. Absent the written consent of the Producing 26 Party, any person who receives access to APPLE HIGHLY CONFIDENTIAL – 27 ATTORNEYS’ EYES ONLY or CM HIGHLY CONFIDENTIAL – ATTORNEYS’ 1 following activities: (i) advising on, consulting on, preparing, prosecuting, drafting, 2 editing, and/or amending of patent applications, specifications, claims, and/or 3 responses to office actions, or otherwise affecting the scope of claims in patents or 4 patent applications relating to the functionality, operation, and design of cellular 5 baseband chipsets, cellular technology, cellular products or cellular subscriber 6 services (generally or as described in any patent in suit), before any foreign or 7 domestic agency, including the United States Patent and Trademark Office; and (ii) 8 the acquisition of patents (including patent applications), or the rights to any such 9 patents or patent applications with the right to sublicense, relating to the 10 functionality, operation, and design of cellular baseband chipsets, cellular 11 technology, cellular products or cellular subscriber services. These prohibitions are 12 not intended to and shall not (i) preclude Counsel from participating in proceedings 13 on behalf of a Party challenging the validity of any patent or on behalf of a Party 14 responding to a challenge to the validity of a patent, or (ii) preclude Counsel from 15 participating directly or indirectly in reexamination, inter partes review, covered 16 business method review, or reissue proceedings on behalf of a patentee. These 17 prohibitions shall begin when the affected individual first receives access to APPLE 18 HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY or CM HIGHLY 19 CONFIDENTIAL – ATTORNEYS’ EYES ONLY information materials until two 20 (2) years after the date the affected individual ceases to have access to the materials. 21 3.2. Development Bar. Absent the written consent of the Producing Party, 22 any Outside Counsel of Record or Expert who receives access to APPLE HIGHLY 23 CONFIDENTIAL – ATTORNEYS’ EYES ONLY or CM HIGHLY 24 CONFIDENTIAL – ATTORNEYS’ EYES ONLY information shall not be 25 involved in performing hardware or software development work or product 26 development work directly or indirectly intended for commercial purposes relating 27 to the functionality, operation, and design of cellular baseband chipsets, cellular 1 known. These prohibitions shall begin when the affected individual first has access 2 to APPLE HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY or CM 3 HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY information until two 4 (2) years after the date the affected individual ceases to have access to the materials. 5 4. USE IN FILINGS OR AT TRIAL OR HEARINGS 6 4.1. APPLE PROTECTED MATERIAL may not be disclosed, directly or 7 indirectly, in an open hearing, filing, or proceeding without prior written consent 8 from Apple. If the disclosing party wishes to obtain that consent from Apple, it 9 should notify Apple’s counsel of its intent to disclose such material at least seventy- 10 two (72) hours in advance of such disclosure, and describe the materials to be 11 disclosed with reasonable particularity. Otherwise, the disclosing party must first 12 request that the courtroom be sealed, and that only those authorized to review 13 APPLE PROTECTED MATERIAL remain during the presentation of such material, 14 or seek to file such material under seal. 15 4.2. CM PROTECTED MATERIAL may not be disclosed, directly or 16 indirectly, in an open hearing, filing, or proceeding without prior written consent 17 from the applicable CM and any other third-party whose confidences are disclosed 18 therein. If the disclosing party wishes to obtain that consent from the CM and, if 19 applicable, any other third party, it should notify the CM’s and, if applicable, other 20 third-party’s counsel of its intent to disclose such material at least seventy-two (72) 21 hours in advance of such disclosure, and provide a copy of the materials to be 22 disclosed. Otherwise, the disclosing party must first request that the courtroom be 23 sealed, and that only those authorized to review CM PROTECTED MATERIAL 24 remain during the presentation of such material, or seek to file such material under 25 seal. 26 This Supplemental Protective Order incorporates by reference all provisions 27 of the Protective Order entered by this Court on May 29, 2019 (Docket Nos. 30-1 & 1 || between the terms of this Supplemental Protective Order and the May 29, 2019 2 || Protective Order, in which case this Supplemental Protective Order shall govern. 3 IT IS SO ORDERED. 4 || Dated: February 4, 2020 ° 2 6 Honorable Michael S. Berg 7 United States Magistrate Judge 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28