The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
PHILIPS NORTH AMERICA LLC, et al., )
)
Plaintiffs, )
)
v. ) No. 21 C 3615
)
GLOBAL MEDICAL IMAGING, LLC, et al., ) Magistrate Judge Finnegan
)
Defendants. )
ORDER
Plaintiffs Philips North America LLC, Koninklijke Philips N.V., and Philips India Ltd.
(“Plaintiffs”) have moved for a protective order governing the use of confidential
information. (Doc. 45). Defendants Global Medical Imaging, LLC d/b/a Avante
Ultrasound, Avante Health Solutions f/k/a Jordan Health Products, LLC, and Jordan
Industries International, LLC (“Defendants”) agree that a protective order is appropriate;
however, the parties are unable to resolve disputes related to certain procedures for (1)
giving designated in-house counsel access to highly confidential information; and (2)
conducting source code inspections. For reasons set forth in this Order, the Court grants
Plaintiffs’ motion.
DISCUSSION
I. Good Cause
The party moving for a protective order is required to show that good cause exists
to enter the protective order. FED. R. CIV. P. 26(c). “Good cause . . . generally signifies
a sound basis or legitimate need to take judicial action.” Hobley v. Chicago Police
Commander Burge, 225 F.R.D. 221, 224 (N.D. Ill. 2004). Here, the parties agree that a
protective order should be entered and that, as competitors, they “should not have access
to each other’s competitively sensitive information” and are best served by a multi-tiered
order designating documents as either “Confidential,” “Highly Confidential,” or “Highly
Confidential – Source Code.” (Doc. 46, at 6; Doc. 55, at 6). Such protective orders are
standard in cases involving trade secrets, and the Court finds good cause for the entry of
a protective order to shield the parties’ confidential information.
II. In-House Counsel’s Access to Highly Confidential Information
A. Agreed Process in Protective Order
The parties agree that one designated in-house counsel may have access to
materials designated Highly Confidential. (See Doc. 46, at 7; Doc. 55, at 11). They also
agree on the process to be followed before access is granted to that counsel. Initially, a
party must make a request to the opposing party to provide access, indicating (in writing)
the full name of the designated in-house counsel and “current and reasonably foreseeable
future primary job duties and responsibilities in sufficient detail to determine present or
potential involvement in any Competitive Decision-Making for the medical imaging
devices at issue in this lawsuit.” (Doc. 90-5, at ¶ 5(c)(i)) (emphasis added).1 After doing
so, the requesting party “may disclose the designated material to the identified in-house
counsel unless, within seven (7) days of delivering the request, the Party receives a
written objection from the designator providing reasonably detailed grounds for the
objection.” (Id. at ¶ 5(c)(ii)).2 If an objection is made, and the requesting party opts to
1 Clean and red-lined copies of various versions of the Protective Order are attached as exhibits to
a joint status report. (Doc. 90). The version referenced in this order is a redline of Plaintiffs’ proposed
protective order against Defendants’ proposed protective order identifying the provisions in dispute. (Doc.
90-5).
2 Defendants’ version of the Protective Order adds the word “reasonably” before the words “detailed
grounds.” (Doc. 90-5, at ¶ 5(c)(ii)). It appears Plaintiffs have agreed to this modest change since their
challenge it, the parties must meet and confer in an effort to resolve the objection. If they
are unable to do so, the designated in-house counsel “shall not receive any Highly
Confidential material until the Court resolves the dispute.” (Id. at ¶ 5(c)(iii)).3
B. Competitive Decision-Making
Despite agreeing to the above process, the parties disagree about whether (and
how) to define the term “Competitive Decision-Making” referenced in paragraph 5 of the
Protective Order. As Plaintiffs argue, “competitive decision making is a term of art” and
what constitutes such decision-making here depends on the “specific issues in the case
and the proposed designated in house counsel’s duties and responsibilities ‘in light of
similar or corresponding information about a competitor.’” (Doc. 46, at 7) (citing U.S.
Steel Corp. v. United States, 730 F.2d 1465, 1468, n.3 (Fed. Cir. 1984)).
In U.S. Steel, the Federal Circuit considered an appeal of an order denying in-
house counsel access to confidential information based solely on counsel’s in-house
position due to the perceived “greater risk of inadvertent disclosure within the corporate
setting.” 730 F.2d at 1467. The lower court had entered the order after concluding that
it was “humanly impossible to control the inadvertent disclosure of some of [the highly
confidential] information in any prolonged working relationship” given the great quantity
of “extremely potent” information that was “intermixed with nonconfidential information[.]”
Id.
motion did not address it, and the Court sees no basis for them to object. The final Protective Order
submitted for entry by the Court should include this change.
3 The Court construes this to mean that if the parties cannot resolve the objection, the designated
in-house counsel “shall not receive any Highly Confidential material until [and unless] the Court resolves
the dispute [and allows that counsel to receive such material.”] The final Protective Order submitted for
entry by the Court should include the bracketed words so it is clear that if the Court resolves the dispute in
a way that denies designated in-house counsel access to Highly Confidential material, then the receiving
party may not provide access.
In overturning that order, the Federal Circuit observed that “[w]hether an
unacceptable opportunity for inadvertent disclosure exists … must be determined … by
the facts on a counsel-by-counsel basis, and cannot be determined solely by giving
controlling weight to the classification of counsel as in-house rather than retained.” Id. at
1468. To determine the extent of the risk, courts must therefore consider “the factual
circumstances surrounding each individual counsel’s activities, association, and
relationship with a party, whether counsel be in-house or retained . . .” Id. In assessing
this, the U.S. Steel court further indicated that a key inquiry is whether counsel is involved
in competitive decision-making, and explained what it meant by that term:
The parties have referred to involvement in “competitive decisionmaking”
as a basis for denial of access. The phrase would appear serviceable as
shorthand for a counsel’s activities, association, and relationship with a
client that are such as to involve counsel’s advice and participation in any
or all of the client’s decisions (pricing, product design, etc.) made in light of
similar or corresponding information about a competitor.
Id. at 1468, n.3 (emphasis added). See also Brown Bag Software v. Symantec Corp.,
960 F.2d 1465, 1470 (9th Cir.1992) (“A crucial factor in the U.S. Steel case was whether
in-house counsel was involved in ‘competitive decisionmaking[.]’”); DSM Desotech, Inc.
v. Momentive Specialty Chemicals, Inc., No. 2:15-CV-70, 2016 WL 8193590, at *8 (S.D.
Ohio May 31, 2016) (counsel’s status as a “competitive decisionmaker … is the most
critical factor in assessing the risk of inadvertent disclosure.”).
The definition of competitive decision-making in U.S. Steel was not meant to be
limited to client decisions involving pricing and product design. As the court observed in
Cummins-Allison Corp. v. Glory Ltd., No. 02 C 7008, 2003 WL 26620151 (N.D. Ill. Dec.
31, 2003), “[t]he [U.S. Steel] court’s use of ‘etc.’ reveals that those are only examples of
the kinds of client decisions that may be made ‘in light of similar or corresponding
information about a competitor.’” Id. at *6. See also DSM Desotech, supra at *6 (quoting
In re Deutsche Bank Trust Co. Am., 605 F.3d 1373, 1378-79 (Fed. Cir. 2010)) (“The
Federal Circuit subsequently made clear that the foregoing definition contained ‘specific
exemplars of activity involving competitive decisionmaking,’ but did not, as subsequent
opinions have recognized, contain an exhaustive list of activities that might implicate or
involve competitive decisionmaking.”).
Where a court determines from the particular facts in a case that there is a risk of
inadvertent disclosure due to designated counsel’s involvement in competitive decision-
making and/or other circumstances, then an additional inquiry is necessary. The court
must next “assess whether this risk of inadvertent disclosure outweighs the risk of
potential harm” from precluding designated counsel from reviewing the highly confidential
materials. DSM Desotech, supra at *8 (citing In re Deutsche Bank, 605 F.3d at 1380) (“A
determination of the risk of inadvertent disclosure does not end the inquiry. Even if a
district court is satisfied that such a risk exists, the district court must balance this risk
against the potential harm to the opposing party from restrictions imposed on that party’s
right to have the benefit of counsel of its choice.”). See also Brown Bag Software, 960
F.2d at 1470 (Court “must balance the risk … of inadvertent disclosure of trade secrets
to competitors against the risk … that protection of … trade secrets” will impair a party’s
ability to prosecute its claims).
Here, the Court has not yet undertaken the above analysis to decide whether a
particular in-house attorney engages in competitive decision-making, and if so, whether
a balancing of harms requires the Court to restrict that attorney’s access to highly
confidential information or impose other restrictions. Not only does the Court lack the
necessary factual information to perform this analysis, but it would be premature to do so
given the agreed process in the Protective Order; the parties have not yet exchanged the
required information about their respective designated in-house counsel and conferred
about any objection to these individuals.
C. Disputed Definitions and Ruling
What the Court must decide at this juncture is only whether to include a definition
of competitive decision-making in the Protective Order, and if so, whether the definition
suggested by Defendants is acceptable. While Defendants contend it is critical to include
their definition, the Court is not persuaded. First, and to the Court’s surprise, Defendants
attempt to demonstrate the need for their particular definition by prematurely arguing that
“The Risk and Potential Injury to Defendants from Inadvertent Disclosure Far Outweighs
Any Potential Impairment in Philips’ Ability to Bring its Case.” (Doc. 55, at 9-11). (See
also id. at 7) (“Upon weighing this risk [of potential misuse of Defendants’ Highly
Confidential Information] against the absence of any identified impairment to Philips’
ability to litigate its case, [their] definition should be adopted.”).
These arguments lend credence to Plaintiffs’ assertion that Defendants are
seeking through their proposed definition to “presumptively exclude [Plaintiffs’] proposed
in-house counsel without any briefing or the specificity required for the Court to determine
if [that counsel] is in fact a competitive decisionmaker in the context of this lawsuit and
the highly confidential information that Defendants would produce in this lawsuit.” (Doc.
64, at 3). Obviously, this Court cannot decide whether competitive decision-making is
involved or conduct any balancing of harms without the type of case-specific information
described in U.S. Steel and considered in other cases. To make findings in a vacuum as
Defendants suggest, and then use those findings as justification for adopting a particular
definition of competitive decision-making, would be backward and contrary to the teaching
of U.S. Steel.
Wholly apart from this problem, the Court also rejects Defendants’ proposed
definition because it appears flawed on its face. They define the term this way:
“Competitive Decision-Making” means business decision-making relating to
a competitor, potential competitor, customer, or distribution partner
including decisions regarding pricing, marketing, design, product or service
offerings, product or service development or research and development, or
licensing, acquisition, or enforcement of intellectual property rights.
(Doc. 90-3, at ¶ 3(d)). Notably, Defendants have omitted key language appearing in the
U.S. Steel definition, namely, that competitive decision-making (on pricing or other
subjects) is decision-making “made in light of similar or corresponding information about
a competitor.” 730 F.2d at 1468, n.3. By omitting this clause, competitive decision-
making could be broadly construed to cover all business decisions relating to customers,
including about product or service offerings, marketing, etc., even if the decisions are not
made in light of similar or corresponding information about a competitor.
Defendants claim their definition “has been used in other cases to account for
potential misuse by a competitor” but do not cite other cases – only language in a single
and stipulated protective order entered in an unrelated case in which no court issued any
decision. (Doc. 55, at 5, n.2) (citing Stipulated Protective Order, United States v. Google,
No. 1:20-CV-3010 (D.D.C. Dec. 21, 2020), found at https://www.justice.gov/atr/case-
document/file/1428256/download (last visited November 17, 2022)). Defendants also
argue that U.S. Steel does not preclude their definition, “which simply incorporates
activities courts have found constitute competitive decision-making.” (Id. at 9). For
example, their definition includes “research and development, and the licensing,
acquisition, and/or enforcement of intellectual property rights” based on legal decisions
where counsel involved in such activities were found to be engaged in competitive
decision-making. (Id. at 8) (citing Intel Corp. v. VIA Techs., Inc., 198 F.R.D. 525, 529-30
(N.D. Cal. 2000); Pinterest, Inc. v. Pintrips, Inc., No. 13-CV-04608-RS (KAW), 2014 WL
5364263, at *2 (N.D. Cal. Oct. 21, 2014); and Nike, Inc. v. Adidas Am. Inc., No. 9:06-CV-
43, 2006 WL 8430978, at *2 (E.D. Tex. Sept. 21, 2006)).
But as Plaintiffs observe, in these decisions each court “made a determination
about a specific individual, his specific job duties and the specific risks that could result
from access to highly confidential information in the context of allegations specific to the
case after the Court received and considered evidence.” (Doc. 64, at 3) (emphasis in
original). This Court has not yet been given such evidence, and so is unable and unwilling
to presume in this case that any attorney engaged in enforcement of intellectual property
rights is necessarily involved in competitive decision-making. This must be determined
“on a case-by-case basis.” DSM Desotech, Inc., supra at *6 (citing In re Deutsche Bank,
605 F.3d at 1379).4
4 Put another way, the facts are what matter rather than the category of decision-making:
Because patent prosecution is not a one-dimensional endeavor and can
encompass a range of activities, it is shortsighted to conclude that every patent
prosecution attorney is necessarily involved in competitive decisionmaking.
Indeed, “denying access to [a party’s] outside counsel on the ground that they also
prosecute patents for [that party] is the type of generalization counseled against in
U.S. Steel. The facts, not the category must inform the result. Our holding in U.S.
Steel dictates that each case should be decided based on the specific facts
involved therein.”
In re Deutsche Bank, 605 F.3d at 1379 (quoting In re Sibia Neurosciences, Inc., 132 F.3d 50, 1997 WL
688174, at *3 (Fed. Cir. 1997)).
Nor is there a need for the definition in the Protective Order. After all, this is not a
case where the parties have agreed that they may unilaterally decide – based on the
definition of competitive decision-making appearing in that Order – whether designated
in-house counsel is involved in such decision-making and so is permitted access to Highly
Confidential Information. Rather, the parties have agreed to a process where they must
exchange information about the designated in-house attorney (including potential
involvement in competitive decision-making for the medical imaging devices at issue in
the lawsuit), and if they cannot agree on whether the attorney may be given access, the
Court resolves the issue. Given this, the Court agrees with Plaintiffs that “a definition
would only uproot the requirements of U.S. Steel and Brown Bag to engage in the
particularized inquiry and analysis necessary to apply that term to this case.” (Doc. 64,
at 3).
In addition, adoption of the proposed definition may well lead to confusion since
the definition is incorporated into another disputed term: “Designated In-House Counsel.”
Defendants define that term as follows:
“Designated In-House Counsel” shall mean, subject to the disclosure
requirements in Section 5(c)(i)-(iii), one in house counsel of the Party who
does not currently exercise any Competitive Decision-Making on behalf of
the Party whom counsel represents and who has signed an undertaking in
the form of Appendix 1 to this Order and provided a copy to counsel for the
opposing Party.
(Doc. 90-3, at ¶ 3(c)) (emphasis added). Proposed Appendix 1 (a form entitled “In-House
Litigation Counsel Agreement Concerning Confidentiality”) requires counsel to certify that
“I do not currently exercise any Competitive Decision-Making authority, as defined in the
protective order … and will not exercise any Competitive Decision-Making for a period of
one (1) year after the conclusion of this litigation, including appeals.” (Id. at 24) (emphasis
added).
What happens, however, if the Court finds after a hearing and consideration of all
the case-specific facts, that a particular attorney is not involved in competitive decision-
making so may access highly confidential information? Under Defendants’ version of the
Protective Order, that attorney would nevertheless be unable to review that information
until and unless he certified that he was not engaged in competitive decision-making as
defined in that Order. Given the breadth and vagueness of the definition, it is possible
that the attorney could not so certify. In this Court’s view, if a specific attorney has been
found not to be engaged in competitive decision-making based on the Court’s
consideration of all the specific facts in the case (or been granted access despite such
decision-making after a balancing of harms), there is no justification for imposing the
certification requirement that Defendants seek.
For all of these reasons, the Court declines to include any definition of competitive
decision-making (and certainly not Defendants’ flawed definition) in the Protective Order.
As for the definition of “Designated In-House Counsel,” the Court adopts Plaintiffs’
definition: “subject to the disclosure requirements in Section 5(c)(i)-(iii), one in house
counsel of the receiving party to whom disclosure is reasonably necessary for this
litigation and who has signed the “Acknowledgement and Agreement to Be Bound”
(Appendix 1).” (Doc. 90-1 at ¶ 3(c)). However, the content of the Acknowledgment must
be modified to correct certain errors, as well as to add language requiring Designated In-
House Counsel to provide prompt notification of any change in decision-making
responsibilities as this may affect counsel’s continued access to Highly Confidential
Information.5
III. Source Code Inspections
The parties also disagree about certain provisions of the proposed Protective
Order that describe procedures relating to inspection of source code.
A. Second Computer
Paragraph six of the Protective Order acknowledges that source code is relevant
to the issues in the case, and that “special procedures are appropriate to protect the
confidentiality of source code.” (Doc. 90-5, at ¶ 6(a)). If materials defined as “Highly
Confidential-Source Code” are made available for inspection in response to a discovery
request, the Producing Party must load the source code onto a computer meeting certain
specifications for review in native format (to the extent reasonably available). (Id. at ¶
6(a)(i)). The Order also specifies acceptable locations where the computer must be made
available for “a reasonable number of days during normal business hours (9:00 a.m. to
5:00 p.m. on open business days) or at other mutually agreeable times.” (Id.).
Notably for purposes of the current dispute, paragraph 6(a)(i) goes on to state: “A
Receiving Party may request, in writing, additional computers for inspecting the material
designated Highly Confidential-Source Code, and the Producing Party shall meet and
confer about any such request, and to the extent practicable, reasonably accommodate
5 Plaintiffs’ Appendix I (entitled “Undertaking of [insert name]”) indicates that it is for retained experts
and consultants rather than Designated In-House counsel. The person signing (under penalty of perjury)
affirms that she has or will be receiving information subject to the Protective Order and has read and will
abide by that order. (Doc. 90-1, at 23). It is premature to decide whether counsel should be required to
certify that she will not exercise any competitive decision-making for one year after the conclusion of the
litigation (including appeals) as Defendants propose. That determination must be made as part of the
balancing of harms analysis that will occur if the parties are unable to reach agreement on who may serve
as Designated In-House counsel for each side.
such requests.” (Id.) (emphasis added). Defendants object to the italicized words,
seeking to replace them with the words below, so that the Producing Party:
shall make at least one (1) additional computer available for the inspection
of material designated Highly Confidential-Source Code, consistent with the
other conditions in this paragraph, within seven (7) days of a written request
for an additional computer. If the Producing Party reasonably believes that
the current status of the ongoing Covid-19 pandemic prevents the Producer
from satisfying its obligations in this paragraph, the Parties shall meet and
confer to suggest and adopt potential modifications.
(Id.).
Plaintiffs complain that if these changes were adopted, the Protective Order would
impose “an obligation to provide multiple source code computers on short notice without
any requirement that Defendants provide a reasonable basis for their demand that Philips
incur the burden and expense associated with creating, transporting and securing an
extra source code computer.” (Doc. 64, at 1). This Court agrees and declines to adopt
an automatic 7-day rule that may not be practical or necessary depending on the
circumstances that present themselves at some future time. To the extent Defendants
ultimately determine there is a need for a second computer and request one, the
Protective Order provides a fair process for the parties to discuss the issue, and flexibility
in attempting to accommodate the request. If the process appears to take too long, or a
party is unhappy with the outcome, that party may seek relief from the Court under the
language in Plaintiffs’ proposed order.
B. Storage of Scripts, Data, Tools on Inspection Computers
The parties have agreed to other procedures surrounding the inspection of source
code to ensure, for example, that the Receiving Party’s outside counsel and/or expert
does not leave any work product or attorney-client privileged information in the location
where the source code computer is examined. (Doc. 90-5, at ¶ 6(a)(viii)). Defendants
ask the Court to add the following additional provision: “However, the Receiving Party’s
experts shall have the right to store scripts and data output by those scripts or other tools
on the computer on which the inspection is being conducted for the purpose of expediting
future inspections of the material designated Highly Confidential–Source Code.” (Id.).
Defendants argue this language should be included as it “relieves its experts from having
to write duplicative code scripts at the outset of each review session to isolate the relevant
portions of the code for review[,]” and so allows the inspection of source code to be
expedited given the “practical limitations on the time both parties have to finish” the
review. (Doc. 55, at 14, 15).
Plaintiffs strenuously object to this provision as “highly atypical” in contrast to the
“standard” language that they propose. (Doc. 46, at 12-13). They describe this “standard”
procedure as follows: “The receiving party goes in person to review source code on a
secure computer, takes notes, identifies sections/folders for printout and removes all
notes when he/she leaves.” (Id. at 13).6 Plaintiffs contend that adoption of Defendants’
additional provision would “allow opposing counsel to store unidentified scripts or other
unidentified tools on a protected source code computer” and so “undermine[ ] the security
of the source code computer and create[ ] a serious risk of copying or other disclosure.”
(Id.) (citing Generac Power Sys., Inc. v. Kohler Co., No. 11 C 1120, 2012 WL 2049945,
at *2 (E.D. Wis. June 6, 2012) (recognizing that “[s]ource code for programs is often one
of the most valuable assets a company possesses.”); and Berkheimer v. Hewlett-Packard
6 Plaintiffs say their proposed protective order “is not just consistent with the Local Patent Order, but
it is consistent with Protective Orders Philips has filed (and which Courts have approved) in other cases
that involved the same type of conduct, systems and software.” (Doc. 64, at 2, n.1) (citing Philips N. Am.,
LLC v. Summit Imaging Inc., No. 2:19-CV-01745-JLR, Dkt. No. 40 (W.D. Wash. Apr. 30, 2020)).
Co., No. 12 C 9023, 2014 WL 12959469, at 3 (N.D. Ill. Apr. 7, 2014) (finding that
“convenience-based arguments do not outweigh Defendant’s legitimate concerns
regarding inadvertent disclosure of its highly confidential and highly valuable source
code.”)).
Defendants, on the other hand, argue that any concerns about the security of the
source code or its inadvertent disclosure are illusory given other and undisputed portions
of the protective order (e.g., the computer will not be connected to any network and use
of recordable media or devices is precluded). (Doc. 55, at 14-15). Yet Defendants did
not identify a single protective order in a case involving source code inspections in which
the provision that they propose appears. Nor did they quarrel with the statement in
Plaintiffs’ motion that such a provision is “highly atypical” in contrast to the “standard”
provision that Plaintiffs included. If the procedure identified by Defendants indeed
expedites the inspection process without any countervailing security risk, the Court would
expect its adoption to be commonplace in cases requiring production of source code.7
The Court declines to adopt the provision sought by Defendants. With the minimal
information provided, the Court is unable to confirm the claim that there is “no plausible
risk” to the source code from adoption of the atypical procedure. (Doc. 55, at 15). Instead,
it seems at least possible that allowing experts to store and use unidentified tools and
scripts on a source code computer could create security concerns for extremely valuable
source code. Moreover, one of the agreed terms of the Protective Order already requires
7 In their motion and reply brief, Plaintiffs assert that defense counsel requested this same atypical
provision in a protective order in another lawsuit involving Philips and the court rejected it. (Doc. 46, at 13,
n.3; Doc. 64, at 6, citing Philips Med. Sys. Nederland B.V. v. TEC Holdings, Inc., No. 3:20-CV-021-MOC-
DCK, Dkt. No. 340, at 20-21 (W.D.N.C. Mar. 31, 2021). Defendants did not address this claim in their
opposition brief.
the Producing Party to “promptly install any tools requested by the Receiving Party that
are reasonably necessary for reviewing and searching the code produced on the
computer.” (Doc. 90-5, at ¶ 6(a)(ii)). And as Plaintiffs acknowledge, the Protective Order
“does not limit an expert’s ability to return – for however many days is reasonably
necessary – to complete his or her inspection . . .” (Doc. 46, at 13). On balance, the
Court is not persuaded that there is sufficient justification for the provision that Defendants
seek for the convenience of their expert to speed the review of source code.
C. Source Code Printouts
The final dispute is over printouts of source code. By agreement, the proposed
Protective Order requires that the receiving party “may not request more than fifty (50)
pages of a continuous block or five hundred (500) total pages of Source Code from each
Producing Party in this litigation without prior written approval by the Producing Party or
Order of the Court.” (Doc. 90-5, at ¶ 6(a)(iv)). What is in dispute is the following sentence
that Defendants ask to be removed: “Requests for printing continuous blocks of source
code exceeding 50 pages or requests for printing over 500 total pages of source code
from a Producing Party in this litigation are presumed unreasonable.” (Id.).
Plaintiffs say the purpose of the disputed language is “to establish a base line
presumption of reasonableness if a party moves for an order to request more.” (Doc. 46,
at 14). As they see it, this presumption and the limits on printed portions of source code
“are both appropriate and standard” given the sensitivity of source code. (Id.).
Defendants argue the presumption is unnecessary given the requirement that the
Receiving Party obtain either prior written approval of the Producing Party or a court order
before it may request printouts of more than 50 pages of continuous block or 500 total
pages of source code. They fear that “inclusion of any presumption would compel the
Court to always weigh against disclosure in all cases, rather than consider the benefit and
costs of such printouts on a case-by-case basis.” (Doc. 55, at 15).
Given the sensitivity of source code material, there is good reason for a
presumption that requests for printing over 50 pages of continuous blocks of source code
or over 500 total pages are unreasonable. Of course, this presumption is rebuttable, so
if the Receiving Party’s request for a large number of printouts of source code is denied,
that party may seek Court review and present specific information about why the request
should be granted.
CONCLUSION
For the foregoing reasons, Plaintiffs’ motion for protective order is granted. The
parties are ordered to submit a revised version of the Protective Order reflecting the
Court’s rulings so it may be entered.
ENTER:
hal Haatfe
Dated: November 17, 2022 5
SHEILA FINNEGAN
United States Magistrate Judge