OKYN Holdings, Inc. v. Hori U.S.A., Inc.

1 THOMAS J. DALY, CA Bar No. 119684

TDaly@lewisroca.com

2 ART HASAN, CA Bar No. 167323

AHasan@lewisroca.com

3 LEWIS ROCA ROTHGERBER CHRISTIE LLP

655 N. Central Avenue, Suite 2300

4 Glendale, California 91203-1445

Telephone: (626) 795-9900

5 Facsimile: (626) 577-8800

6 SIHO “SCOTT” YOO, CA Bar No. 311202

SYoo@lewisroca.com

7 LEWIS ROCA ROTHGERBER CHRISTIE LLP

203 Redwood Shores Parkway, Suite 670

8 Redwood City, California 94065

Telephone: (650) 391-1380

9 Facsimile: (650) 391-1395

Attorneys for Plaintiff and Counterclaim Defendant

10 OKYN HOLDINGS, INC. dba NYKO TECHNOLOGIES

11 DANIEL YANNUZZI, Cal. Bar No. 196612

dyannuzzi@sheppardmullin.com

12 DOMINIQUE COMBS, Cal. Bar No. 299742

dcombs@sheppardmullin.com

13 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

12275 El Camino Real, Suite 100

14 San Diego, California 92130

Telephone: 858.720.8900

15 Facsimile: 858.509.3691

16 DARREN FRANKLIN, CA Bar No. 210939

dfranklin@sheppardmullin.com

17 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

333 S. Hope Street, 43rd Floor

18 Los Angeles CA 90071

Telephone: 213.620.1780

19 Facsimile: 213.620.1398

20 JENNIFER KLEIN AYERS (pro hac vice)

jayers@sheppardmullin.com

21 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

2200 Ross Avenue, 20th Floor

22 Dallas, Texas 75201

Telephone: 469.391.7400

23 Facsimile: 469.391.7401

24 Attorneys for Defendant and Counterclaimant

HORI (U.S.A.), Inc.

25

26

27

1 UNITED STATES DISTRICT COURT

2 CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

3 OKYN HOLDINGS, INC. dba NYKO Case No. 2:21-cv-04796-AB(PDx)

TECHNOLOGIES,

4 STIPULATED PROTECTIVE ORDER1

Plaintiff,

5

v.

6

HORI (U.S.A.), INC.,

7

Defendant.

8

AND RELATED COUNTERCLAIMS.

9

10 1. A. PURPOSES AND LIMITATIONS

11 Discovery in this action is likely to involve production of confidential,

12 proprietary, or private information for which special protection from public

13 disclosure and from use for any purpose other than prosecuting this litigation may

14 be warranted. Accordingly, the parties hereby stipulate to and petition the Court to

15 enter the following Stipulated Protective Order. The parties acknowledge that this

16 Order does not confer blanket protections on all disclosures or responses to

17 discovery and that the protection it affords from public disclosure and use extends

18 only to the limited information or items that are entitled to confidential treatment

19 under the applicable legal principles.

20 B. GOOD CAUSE STATEMENT

21 This action is likely to involve trade secrets, customer and pricing lists and

22 other valuable research, development, commercial, financial, technical and/or

23 proprietary information for which special protection from public disclosure and

24 from use for any purpose other than prosecution of this action is warranted. Such

25 confidential and proprietary materials and information consist of, among other

26

27

1 This Stipulated Protective Order is substantially based on the model protective

1 things, confidential business or financial information, information regarding

2 confidential business practices, or other confidential research, development, or

3 commercial information (including information implicating privacy rights of third

4 parties), information otherwise generally unavailable to the public, or which may be

5 privileged or otherwise protected from disclosure under state or federal statutes,

6 court rules, case decisions, or common law. Accordingly, to expedite the flow of

7 information, to facilitate the prompt resolution of disputes over confidentiality of

8 discovery materials, to adequately protect information the parties are entitled to keep

9 confidential, to ensure that the parties are permitted reasonable necessary uses of

10 such material in preparation for and in the conduct of trial, to address their handling

11 at the end of the litigation, and serve the ends of justice, a protective order for such

12 information is justified in this matter. It is the intent of the parties that information

13 will not be designated as confidential for tactical reasons and that nothing be so

14 designated without a good faith belief that it has been maintained in a confidential,

15 non-public manner, and there is good cause why it should not be part of the public

16 record of this case.

17 C. ACKNOWLEDGMENT OF PROCEDURE FOR FILING UNDER SEAL

18 The parties further acknowledge, as set forth in Section 13.3, below, that this

19 Stipulated Protective Order does not entitle them to file confidential information

20 under seal; Local Civil Rule 79-5 sets forth the procedures that must be followed

21 and the standards that will be applied when a party seeks permission from the court

22 to file material under seal.

23 There is a strong presumption that the public has a right of access to judicial

24 proceedings and records in civil cases. In connection with non-dispositive motions,

25 good cause must be shown to support a filing under seal. See Kamakana v. City and

26 County of Honolulu, 447 F.3d 1172, 1176 (9th Cir. 2006), Phillips v. Gen. Motors

27 Corp., 307 F.3d 1206, 1210-11 (9th Cir. 2002), Makar-Welbon v. Sony Electrics,

1 require good cause showing), and a specific showing of good cause or compelling

2 reasons with proper evidentiary support and legal justification, must be made with

3 respect to Protected Material that a party seeks to file under seal. The parties’ mere

4 designation of Disclosure or Discovery Material as CONFIDENTIAL or HIGHLY

5 CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY does not—without

6 the submission of competent evidence by declaration, establishing that the material

7 sought to be filed under seal qualifies as confidential, privileged, or otherwise

8 protectable—constitute good cause.

9 Further, if a party requests sealing related to a dispositive motion or trial, then

10 compelling reasons, not only good cause, for the sealing must be shown, and the

11 relief sought shall be narrowly tailored to serve the specific interest to be protected.

12 See Pintos v. Pacific Creditors Ass’n, 605 F.3d 665, 677-79 (9th Cir. 2010). For

13 each item or type of information, document, or thing sought to be filed or introduced

14 under seal in connection with a dispositive motion or trial, the party seeking

15 protection must articulate compelling reasons, supported by specific facts and legal

16 justification, for the requested sealing order. Again, competent evidence supporting

17 the application to file documents under seal must be provided by declaration.

18 Any document that is not confidential, privileged, or otherwise protectable in

19 its entirety will not be filed under seal if the confidential portions can be redacted. If

20 documents can be redacted, then a redacted version for public viewing, omitting

21 only the confidential, privileged, or otherwise protectable portions of the document,

22 shall be filed. Any application that seeks to file documents under seal in their

23 entirety should include an explanation of why redaction is not feasible.

24 2. DEFINITIONS

25 2.1 Action: this pending federal law suit.

26 2.2 Challenging Party: a Party or Non-Party that challenges the designation

27 of information or items under this Order.

1 2.3 “CONFIDENTIAL” Information or Items: information (regardless of

2 how it is generated, stored or maintained) or tangible things that qualify for

3 protection under Federal Rule of Civil Procedure 26(c), and as specified above in

4 the Good Cause Statement.

5 2.4 Designating Party: a Party or Non-Party that designates information or

6 items that it produces in disclosures or in responses to discovery as

7 “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’

8 EYES ONLY.”

9 2.5 Disclosure or Discovery Material: all items or information, regardless

10 of the medium or manner in which it is generated, stored, or maintained (including,

11 among other things, testimony, transcripts, and tangible things), that are produced or

12 generated in disclosures or responses to discovery in this matter.

13 2.6 Expert: a person with specialized knowledge or experience in a matter

14 pertinent to the litigation who has been retained by a Party or its counsel to serve as

15 an expert witness or as a consultant in this Action.

16 2.7 “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES

17 ONLY” Information or Items: extremely sensitive “CONFIDENTIAL Information

18 or Items,” disclosure of which to another Party or Non-Party would create a

19 substantial risk of serious harm that could not be avoided by less restrictive means.

20 2.8 Non-Party: any natural person, partnership, corporation, association, or

21 other legal entity not named as a Party to this action.

22 2.9 Outside Counsel of Record: attorneys who are not employees of a party

23 to this Action but are retained to represent or advise a party to this Action and have

24 appeared in this Action on behalf of that party or are affiliated with a law firm which

25 has appeared on behalf of that party, and includes support staff.

26 2.10 Party: any party to this Action, including all of its officers, directors,

27 employees, consultants, retained experts, and Outside Counsel of Record (and their

1 2.11 Producing Party: a Party or Non-Party that produces Disclosure or

2 Discovery Material in this Action.

3 2.12 Professional Vendors: persons or entities that provide litigation support

4 services (e.g., photocopying, videotaping, translating, preparing exhibits or

5 demonstrations, and organizing, storing, or retrieving data in any form or medium)

6 and their employees and subcontractors.

7 2.13 Protected Material: any Disclosure or Discovery Material that is

8 designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – OUTSIDE

9 ATTORNEYS’ EYES ONLY.”

10 2.14 Receiving Party: a Party that receives Disclosure or Discovery Material

11 from a Producing Party.

12 3. SCOPE

13 The protections conferred by this Stipulation and Order cover not only

14 Protected Material (as defined above), but also (1) any information copied or

15 extracted from Protected Material; (2) all copies, excerpts, summaries, or

16 compilations of Protected Material; and (3) any testimony, conversations, or

17 presentations by Parties or their Outside Counsel of Record that might reveal

18 Protected Material.

19 Any use of Protected Material at trial shall be governed by the orders of the

20 trial judge. This Order does not govern the use of Protected Material at trial.

21 4. DURATION

22 FINAL DISPOSITION of the action is defined as the conclusion of any

23 appellate proceedings, or, if no appeal is taken, when the time for filing of an appeal

24 has run. Except as set forth below, the terms of this protective order apply through

25 FINAL DISPOSITION of the action. The parties may stipulate that they will be

26 contractually bound by the terms of this agreement beyond FINAL DISPOSITION,

27 but will have to file a separate action for enforcement of the agreement once all

1 Once a case proceeds to trial, information that was designated as

2 CONFIDENTIAL or “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’

3 EYES ONLY” or maintained pursuant to this protective order that is used or

4 introduced as an exhibit at trial becomes public and will be presumptively available

5 to all members of the public, including the press, unless compelling reasons

6 supported by specific factual findings to proceed otherwise are made to the trial

7 judge in advance of the trial. See Kamakana, 447 F.3d at 1180-81 (distinguishing

8 “good cause” showing for sealing documents produced in discovery from

9 “compelling reasons” standard when merits-related documents are part of court

10 record). Accordingly, for such materials, the terms of this protective order do not

11 extend beyond the commencement of the trial.

12 5. DESIGNATING PROTECTED MATERIAL

13 5.1 Exercise of Restraint and Care in Designating Material for Protection.

14 Each Party or Non-Party that designates information or items for protection under

15 this Order must take care to limit any such designation to specific material that

16 qualifies under the appropriate standards. The Designating Party must designate for

17 protection only those parts of material, documents, items, or oral or written

18 communications that qualify so that other portions of the material, documents,

19 items, or communications for which protection is not warranted are not swept

20 unjustifiably within the ambit of this Order.

21 Mass, indiscriminate, or routinized designations are prohibited. Designations

22 that are shown to be clearly unjustified or that have been made for an improper

23 purpose (e.g., to unnecessarily encumber the case development process or to impose

24 unnecessary expenses and burdens on other parties) may expose the Designating

25 Party to sanctions.

26 If it comes to a Designating Party’s attention that information or items that it

27 designated for protection do not qualify for protection, that Designating Party must

1 5.2 Manner and Timing of Designations. Except as otherwise provided in

2 this Order (see, e.g., second paragraph of Section 5.2(a) below), or as otherwise

3 stipulated or ordered, Disclosure or Discovery Material that qualifies for protection

4 under this Order must be clearly so designated before the material is disclosed or

5 produced.

6 Designation in conformity with this Order requires:

7 (a) for information in documentary form (e.g., paper or electronic documents,

8 but excluding transcripts of depositions or other pretrial or trial proceedings), that

9 the Producing Party affix at a minimum, the legend “CONFIDENTIAL” or

10 “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY”, to each

11 page that contains protected material. If only a portion or portions of the material on

12 a page qualifies for protection, the Producing Party also must clearly identify the

13 protected portion(s) (e.g., by making appropriate markings in the margins).

14 A Party or Non-Party that makes original documents available for inspection

15 need not designate them for protection until after the inspecting Party has indicated

16 which documents it would like copied and produced. During the inspection and

17 before the designation, all of the material made available for inspection shall be

18 deemed “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY.”

19 After the inspecting Party has identified the documents it wants copied and

20 produced, the Producing Party must determine which documents, or portions

21 thereof, qualify for protection under this Order. Then, before producing the specified

22 documents, the Producing Party must affix the “CONFIDENTIAL” or “HIGHLY

23 CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY” designation to each

24 page that contains Protected Material. If only a portion or portions of the material on

25 a page qualifies for protection, the Producing Party also must clearly identify the

26 protected portion(s) (e.g., by making appropriate markings in the margins).

27 (b) for testimony given in depositions or in other proceedings that the

1 before the close of the deposition, hearing, or other proceeding, all protected

2 testimony and specify the level of protection being asserted. When it is impractical

3 to identify separately each portion of testimony that is entitled to protection and it

4 appears that substantial portions of the testimony may qualify for protection, the

5 Designating Party may invoke on the record (before the deposition, hearing, or other

6 proceeding is concluded) a right to have up to 21 days to identify the specific

7 portions of the testimony as to which protection is sought and to specify the level of

8 protection being asserted. Only those portions of the testimony that are appropriately

9 designated for protection within the 21 days shall be covered by the provisions of

10 this Stipulated Protective Order. Alternatively, a Designating Party may specify, at

11 the deposition or up to 21 days afterwards if that period is properly invoked, that the

12 entire transcript shall be treated as “CONFIDENTIAL” or “HIGHLY

13 CONFIDENTIAL– OUTSIDE ATTORNEYS’ EYES ONLY.”

14 (c) for information produced in some form other than documentary and for

15 any other tangible items, that the Producing Party affix in a prominent place on the

16 exterior of the container or containers in which the information is stored the legend

17 “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’

18 EYES ONLY.” If only a portion or portions of the information warrants protection,

19 the Producing Party, to the extent practicable, shall identify the protected portion(s)

20 and specify the level of protection being asserted.

21 5.3 Inadvertent Failures to Designate. If timely corrected, an inadvertent

22 failure to designate qualified information or items does not, standing alone, waive

23 the Designating Party’s right to secure protection under this Order for such material.

24 Upon timely correction of a designation, the Receiving Party must make reasonable

25 efforts to assure that the material is treated in accordance with the provisions of this

26 Order.

27 6. CHALLENGING CONFIDENTIALITY DESIGNATIONS

1 6.1 Timing of Challenges. Any Party or Non-Party may challenge a

2 designation of confidentiality at any time that is consistent with the Court’s

3 Scheduling Order.

4 6.2 Meet and Confer. The Challenging Party shall initiate the dispute

5 resolution process under Local Rule 37.1 et seq.

6 6.3 The burden of persuasion in any such challenge proceeding shall be on

7 the Designating Party. Frivolous challenges, and those made for an improper

8 purpose (e.g., to harass or impose unnecessary expenses and burdens on other

9 parties) may expose the Challenging Party to sanctions. Unless the Designating

10 Party has waived or withdrawn the confidentiality designation, all parties shall

11 continue to afford the material in question the level of protection to which it is

12 entitled under the Producing Party’s designation until the Court rules on the

13 challenge.

14 7. ACCESS TO AND USE OF PROTECTED MATERIAL

15 7.1 Basic Principles. A Receiving Party may use Protected Material that is

16 disclosed or produced by another Party or by a Non-Party in connection with this

17 Action only for prosecuting, defending, or attempting to settle this Action. Such

18 Protected Material may be disclosed only to the categories of persons and under the

19 conditions described in this Order. When the Action has been terminated, a

20 Receiving Party must comply with the provisions of Section 14 below (FINAL

21 DISPOSITION).

22 Protected Material must be stored and maintained by a Receiving Party at a

23 location and in a secure manner that ensures that access is limited to the persons

24 authorized under this Order.

25 7.2 Disclosure of “CONFIDENTIAL” Information or Items. Unless

26 otherwise ordered by the court or permitted in writing by the Designating Party, a

27 Receiving Party may disclose any information or item designated

1 (a) the Receiving Party’s Outside Counsel of Record in this Action, as well

2 as employees of said Outside Counsel of Record to whom it is reasonably necessary

3 to disclose the information for this Action;

4 (b) the officers, directors, and employees (including in-house attorneys) of

5 the Receiving Party to whom disclosure is reasonably necessary for this Action;

6 (c) Experts (as defined in this Order) of the Receiving Party to whom

7 disclosure is reasonably necessary for this Action and who have signed the

8 “Acknowledgment and Agreement to Be Bound” (Exhibit A);

9 (d) the court and its personnel;

10 (e) court reporters and their staff;

11 (f) professional jury or trial consultants, mock jurors, and Professional

12 Vendors to whom disclosure is reasonably necessary for this Action and who have

13 signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A);

14 (g) the author or recipient of a document containing the information or a

15 custodian or other person who otherwise possessed or knew the information;

16 (h) during their depositions, witnesses, and attorneys for witnesses, in the

17 Action to whom disclosure is reasonably necessary provided: (1) the deposing party

18 requests that the witness sign the form attached as Exhibit 1 hereto; and (2) they will

19 not be permitted to keep any confidential information unless they sign the

20 “Acknowledgment and Agreement to Be Bound” (Exhibit A), unless otherwise

21 agreed by the Designating Party or ordered by the court. Pages of transcribed

22 deposition testimony or exhibits to depositions that reveal Protected Material may

23 be separately bound by the court reporter and may not be disclosed to anyone except

24 as permitted under this Stipulated Protective Order; and

25 (i) any mediator or settlement officer, and their supporting personnel,

26 mutually agreed upon by any of the parties engaged in settlement discussions.

27 7.3 Disclosure of “HIGHLY CONFIDENTIAL – OUTSIDE

1 the court or permitted in writing by the Designating Party, a Receiving Party may

2 disclose any information or item designated “HIGHLY CONFIDENTIAL –

3 OUTSIDE ATTORNEYS’ EYES ONLY” only to:

4 (a) the Receiving Party’s Outside Counsel of Record in this Action, as well

5 as employees of said Outside Counsel of Record to whom it is reasonably necessary

6 to disclose the information for this Action;

7 (b) Experts (as defined in this Order) of the Receiving Party (1) to whom

8 disclosure is reasonably necessary for this Action, (2) who have signed the

9 “Acknowledgment and Agreement to Be Bound” (Exhibit A), and (3) as to whom

10 the procedures set forth in Section 7.4, below, have been followed;

11 (c) the court and its personnel;

12 (d) court reporters and their staff;

13 (e) professional jury or trial consultants, mock jurors, and Professional

14 Vendors to whom disclosure is reasonably necessary for this Action and who have

15 signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A);

16 (f) the author or recipient of a document containing the information or a

17 custodian or other person who otherwise possessed or knew the information; and

18 (g) any mediator or settlement officer, and their supporting personnel,

19 mutually agreed upon by any of the parties engaged in settlement discussions.

20 7.4 Procedures for Approving or Objecting to Disclosure of “HIGHLY

21 CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY” Information or

22 Items.

23 (a) Unless otherwise ordered by the court or agreed to in writing by the

24 Designating Party, a Receiving Party that seeks to disclose to an Expert any

25 information or item that has been designated “HIGHLY CONFIDENTIAL –

26 OUTSIDE ATTORNEYS’ EYES ONLY” pursuant to Section 7.3(b) first must

27 make a written request to the Designating Party that (1) identifies the general

1 ONLY” information that the Receiving Party seeks permission to disclose to the

2 Expert, (2) sets forth the full name of the Expert and the city and state of his or her

3 primary residence, (3) attaches a copy of the Expert’s current resume, (4) identifies

4 the Expert’s current employer(s), (5) identifies each person or entity from whom the

5 Expert has received compensation or funding for work in his or her areas of

6 expertise or to whom the Expert has provided professional services, including in

7 connection with a litigation, at any time during the preceding five years, and (6)

8 identifies (by name and number of the case, filing date, and location of court) any

9 litigation in connection with which the Expert has offered expert testimony,

10 including through a declaration, report, or testimony at a deposition or trial, during

11 the preceding five years.

12 (b) A Receiving Party that makes a request and provides the information

13 specified in the preceding respective paragraph may disclose the subjected Protected

14 Material to the identified Expert unless, within 14 days of delivering the request, the

15 Receiving Party receives a written objection from the Designating Party. Any such

16 objection must set forth in detail the grounds on which it is based.

17 (c) A Receiving Party that receives a timely written objection must meet

18 and confer with the Designating Party (through direct voice to voice dialogue) to try

19 to resolve the matter by agreement within seven days of the written objection. If no

20 agreement is reached, the Receiving Party seeking to make the disclosure to the

21 Expert may file a motion seeking permission from the court to do so. Any such

22 motion must describe the circumstances with specificity, set forth in detail the

23 reasons why the disclosure to the Expert is reasonably necessary, assess the risk of

24 harm that the disclosure would entail, and suggest any additional means that could

25 be used to reduce that risk. In addition, any such motion must be accompanied by a

26 competent declaration describing the parties’ efforts to resolve the matter by

27 agreement (i.e., the extent and content of the meet and confer discussions) and

1 the disclosure. In any such proceeding, the Designating Party opposing disclosure to

2 the Expert shall bear the burden of proving that the risk of harm that the disclosure

3 would entail (under the safeguards proposed) outweighs the Receiving Party’s need

4 to disclose the Protected Material to its Expert.

5 8. PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED

6 IN OTHER LITIGATION

7 If a Party is served with a subpoena or a court order issued in other litigation

8 that compels disclosure of any information or items designated in this Action as

9 “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’

10 EYES ONLY,” that Party must:

11 (a) promptly notify in writing the Designating Party. Such notification

12 shall include a copy of the subpoena or court order;

13 (b) promptly notify in writing the party who caused the subpoena or order

14 to issue in the other litigation that some or all of the material covered by the

15 subpoena or order is subject to this Protective Order. Such notification shall include

16 a copy of this Stipulated Protective Order; and

17 (c) cooperate with respect to all reasonable procedures sought to be

18 pursued by the Designating Party whose Protected Material may be affected.

19 If the Designating Party timely seeks a protective order, the Party served with

20 the subpoena or court order shall not produce any information designated in this

21 action as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – OUTSIDE

22 ATTORNEYS’ EYES ONLY” before a determination by the court from which the

23 subpoena or order issued, unless the Party has obtained the Designating Party’s

24 permission. The Designating Party shall bear the burden and expense of seeking

25 protection in that court of its confidential material and nothing in these provisions

26 should be construed as authorizing or encouraging a Receiving Party in this Action

27 to disobey a lawful directive from another court.

1 9. A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE

2 PRODUCED IN THIS LITIGATION

3 (a) The terms of this Order are applicable to information produced by a

4 Non-Party in this Action and designated as “CONFIDENTIAL” or “HIGHLY

5 CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY.” Such information

6 produced by Non-Parties in connection with this litigation is protected by the

7 remedies and relief provided by this Order. Nothing in these provisions should be

8 construed as prohibiting a Non-Party from seeking additional protections.

9 (b) In the event that a Party is required, by a valid discovery request, to

10 produce a Non-Party’s confidential information in its possession, and the Party is

11 subject to an agreement with the Non-Party not to produce the Non-Party’s

12 confidential information, then the Party shall:

13 (1) promptly notify in writing the Requesting Party and the Non-

14 Party that some or all of the information requested is subject to a confidentiality

15 agreement with a Non-Party;

16 (2) promptly provide the Non-Party with a copy of the Stipulated

17 Protective Order in this Action, the relevant discovery request(s), and a reasonably

18 specific description of the information requested; and

19 (3) make the information requested available for inspection by the

20 Non-Party, if requested.

21 (c) If the Non-Party fails to seek a protective order from this court within

22 14 days of receiving the notice and accompanying information, the Receiving Party

23 may produce the Non-Party’s confidential information responsive to the discovery

24 request. If the Non-Party timely seeks a protective order, the Receiving Party shall

25 not produce any information in its possession or control that is subject to the

26 confidentiality agreement with the Non-Party before a determination by the court.

27 Absent a court order to the contrary, the Non-Party shall bear the burden and

1 10. UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL

2 If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed

3 Protected Material to any person or in any circumstance not authorized under this

4 Stipulated Protective Order, the Receiving Party must immediately (a) notify in

5 writing the Designating Party of the unauthorized disclosures, (b) use its best efforts

6 to retrieve all unauthorized copies of the Protected Material, (c) inform the person or

7 persons to whom unauthorized disclosures were made of all the terms of this Order,

8 and (d) request such person or persons to execute the “Acknowledgment and

9 Agreement to Be Bound” that is attached hereto as Exhibit A.

10 11. INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE

11 PROTECTED MATERIAL

12 The inadvertent production by a Party of Discovery Material subject to the

13 attorney-client privilege, work-product immunity, or other privilege or immunity

14 shall not operate as a waiver of any such privilege or immunity if, after recognizing

15 that privileged information has been produced or disclosed, the Producing Party who

16 made the inadvertent production or disclosure sends to each Receiving Party a

17 written request for return of the inadvertently produced or disclosed document or

18 thing within a reasonably prompt period of time. The written request shall provide to

19 the Receiving Party for each such document or thing a description of the basis for

20 the claim of privilege or immunity. Within seven (7) business days of receiving such

21 a request, the Receiving Party shall (a) return to the Producing Party all such

22 documents and things identified by the Producing Party as being protected by the

23 attorney-client privilege, work-product immunity, or other privilege or immunity

24 and as having been inadvertently produced, and (b) delete any electronic records

25 thereof (with the exception of back-up tapes or other archival media, which should

26 be treated in accordance with standard retention policies). The Receiving Party

27 shall not utilize the information contained in the inadvertently produced documents

1 or things for any purpose, or disseminate or transmit such information, except as

2 provided in subsection (a) below.

3 (a) If the Receiving Party wishes to contest that any such document or

4 thing is protected by attorney-client privilege, work-product immunity, or other

5 privilege or immunity, the Receiving Party shall so notify the Producing Party in

6 writing when the document or thing is returned to the Producing Party (“Notice of

7 Disputed Designation”). The Receiving Party may retain one (1) copy of the

8 document(s) or thing(s) at issue for the purposes of filing a motion to contest the

9 designation. The copy retained by the Receiving Party must be sequestered, and

10 may not be used for any purpose except to present the information to the Court for a

11 determination of the claim of privilege.

12 (b) Any letter or motion filed pursuant to this Section shall be filed under

13 seal in accordance with the procedures set forth herein or in the Local Rules for

14 filing Protected Material with the Court. If the Court rejects the Receiving Party’s

15 challenge to the privileged status of the inadvertent production, the one (1) copy, if

16 any, retained by the Receiving Party as set forth in subparagraph (a) of this Section

17 11 shall be immediately returned to the Producing Party.

18 (c) If the Receiving Party generated documents or things which contain

19 information derived from such inadvertently produced documents and things, the

20 Receiving Party shall make reasonable efforts to either destroy the derivative

21 documents and things or redact from them all such derivative privilege or work-

22 product information in a manner such that the derivative information cannot in any

23 way be retrieved or reproduced once any challenge relating to the privileged status

24 of the inadvertent production is resolved.

25 (d) The procedures set forth in this Section 11 for challenging the

26 privileged status of an inadvertent production shall not result in any waiver of the

27 attorney-client privilege, the work product immunity, or any other privilege or

1 product immunity, or any other privilege or immunity for an inadvertent disclosure

2 or production if the Producing Party complies with the procedures set forth in this

3 Section 11 with respect to such inadvertent disclosure or production.

4 Nothing herein is intended to alter any attorney’s obligation to abide by any

5 applicable rules of professional responsibility relating to the inadvertent disclosure

6 of privileged information.

7 12. PROSECUTION BAR

8 Absent written consent from the Designating Party, any individual who

9 receives access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”

10 information shall not be involved in the prosecution of patents or patent applications

11 relating to the field of the invention of the patents-in-suit, including without

12 limitation the patents asserted in this action and any patent or application claiming

13 priority to or otherwise related to the patents asserted in this action, before any

14 foreign or domestic agency, including the United States Patent and Trademark

15 Office (“the Patent Office”). For purposes of this paragraph, “prosecution” includes

16 directly or indirectly drafting, amending, advising, or otherwise affecting the scope

17 or maintenance of patent claims.2 To avoid any doubt, “prosecution” as used in this

18 paragraph does not include representing a party challenging a patent before a

19 domestic or foreign agency (including, but not limited to, a reissue protest, ex parte

20 reexamination or inter partes reexamination). This Prosecution Bar shall begin when

21 access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”

22 information is first received by the affected individual and shall end two (2) years

23 after final termination of this action.

24 13. MISCELLANEOUS

25 13.1 Right to Further Relief. Nothing in this Order abridges the right of any

26 person to seek its modification by the Court in the future.

27

2 Prosecution includes, for example, original prosecution, reissue and reexamination

1 13.2 Right to Assert Other Objections. By stipulating to the entry of this

2 Protective Order no Party waives any right it otherwise would have to object to

3 disclosing or producing any information or item on any ground not addressed in this

4 Stipulated Protective Order. Similarly, no Party waives any right to object on any

5 ground to use in evidence of any of the material covered by this Protective Order.

6 13.3 Filing and Use of Protected Material in Court.

7 A Party that seeks to file under seal any Protected Material must comply with

8 Civil Local Rule 79-5, including Civil Local Rule 79-5.2.2(b). Protected Material

9 may only be filed under seal pursuant to a court order authorizing the sealing of the

10 specific Protected Material at issue. If a Party's request to file Protected Material

11 under seal is denied by the court, then the Receiving Party may file the information

12 in the public record unless otherwise instructed by the court.

13 Absent written permission from the Producing Party or a court order secured

14 after appropriate notice to all interested persons, a Receiving Party may not file in

15 the public record any Protected Material unless a request to file the Protected

16 Material under seal has been denied by the court.

17 Where Protected Material is used at a hearing, the Party seeking to use the

18 Protected Material must notify the Court and counsel for the Producing Party before

19 the information is disclosed to ensure the Producing Party has an opportunity to

20 object to the public disclosure of such information. The Parties shall meet and

21 confer prior to trial to discuss procedures for maintaining the confidentiality of

22 Protected Material during trial.

23 14. FINAL DISPOSITION

24 After the final disposition of this Action, as defined in Section 4, within 60

25 days of a written request by the Designating Party, each Receiving Party must return

26 all Protected Material to the Producing Party or destroy such material. As used in

27 this subdivision, “all Protected Material” includes all copies, abstracts, compilations,

1 || Material. Whether the Protected Material is returned or destroyed, the Receiving

2 || Party must submit a written certification to the Producing Party (and, if not the same

3 || person or entity, to the Designating Party) by the 60 day deadline that (1) identifies

4||(by category, where appropriate) all the Protected Material that was returned or

5||destroyed and (2)affirms that the Receiving Party has not retained any copies,

6 || abstracts, compilations, summaries or any other format reproducing or capturing any

7\|of the Protected Material. Notwithstanding this provision, Outside Counsel of

8 || Record are entitled to retain an archival copy of all pleadings, motion papers, trial,

9 ||deposition, and hearing transcripts, legal memoranda, correspondence, deposition

10 || and trial exhibits, expert reports, attorney work product, and consultant and expert

11 || work product, even if such materials contain Protected Material. Any such archival

12 || copies that contain or constitute Protected Material remain subject to this Protective

13 || Order as set forth in Section 4 (DURATION).

14]}15. Any violation of this Order may be punished by any and all appropriate

15 ||measures including, without limitation, contempt proceedings and/or monetary

16 || sanctions.

|| IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.

18 |] DATED: November 19, 2021

19 /s/ Siho “Scott” Yoo

20 || Attorneys for Plaintiff

71 DATED: November 19, 2021

/s/ Jennifer Klein Ayers

Attorneys for Defendant

FOR GOOD CAUSE SHOWN, IT IS SO ORDERED.

26 || DATED: November 22, 2021

07 altura hJonatoe_

2 || Patricia Donahue, United States Magistrate Judge

1 EXHIBIT A

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND

2

3 I, ________________________ [print or type full name], of

4 _________________ [print or type full address], declare under penalty of perjury

5 that I have read in its entirety and understand the Stipulated Protective Order that

6 was issued by the United States District Court for the Central District of

7 California on [date] in the case of OKYN HOLDINGS, INC. dba NYKO

8 Technologies v. HORI (U.S.A.), INC., Case No. 2:21-cv-04796-AB-PD. I agree to

9 comply with and to be bound by all the terms of this Stipulated Protective Order

10 and I understand and acknowledge that failure to so comply could expose me to

11 sanctions and punishment in the nature of contempt. I solemnly promise that I

12 will not disclose in any manner any information or item that is subject to this

13 Stipulated Protective Order to any person or entity except in strict compliance

14 with the provisions of this Order. I further agree to submit to the jurisdiction of

15 the United States District Court for the Central District of California for the

16 purpose of enforcing the terms of this Stipulated Protective Order, even if such

17 enforcement proceedings occur after termination of this action. I hereby appoint

18 ________________________ [print or type full name] of _________ [print or

19 type full address and telephone number] as my California agent for service of

20 process in connection with this action or any proceedings related to enforcement

21 of this Stipulated Protective Order.

22

23 Date: __________________________

24

City and State where sworn and signed: _____________________________

25

Printed name: ____________________________________

26

27 Signature: ________________________________