Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 1 of 33 PageID #: 15454
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendant.
`
`
`
`
`C.A. No. 17-770-JDW-MPT
`
`JURY TRIAL DEMANDED
`
`
`
`)))))))))
`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`
`CATERPILLAR INC.,
`
`
`
`
`
`NOTICE OF SUBPOENA
`
`PLEASE TAKE NOTICE that, pursuant to Rule 45 of the Federal Rules of Civil
`
`Procedure, Defendant Caterpillar Inc. will serve the attached subpoena (Ex. 1) in the above-
`
`referenced action.
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 2 of 33 PageID #: 15455
`
`
`
`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Bindu A. Palapura
`Bindu A. Palapura (#5370)
`Andrew L. Brown (#6766)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`bpalapura@potteranderson.com
`abrown@potteranderson.com
`
`
`Attorneys for Defendant Caterpillar Inc.
`
`
`OF COUNSEL:
`
`James C. Yoon
`Christopher D. Mays
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 493-9300
`
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Telephone: (206) 883-2500
`
`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019
`Telephone: (212) 999-5800
`
`Erik J. Carlson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Telephone: (323) 210-2900
`
`Dated: March 23, 2023
`10701468/11898.00005
`
`- 2 -
`
`
`
`
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 3 of 33 PageID #: 15456
`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 3 of 33 PagelD #: 15456
`
`EXHIBIT 1
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 4 of 33 PageID #: 15457
`
`AO 88B (Rev. 12/13) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
`__________ District of __________
`District of Delaware
`
`Civil Action No.
`
`17-770-JDW
`
`))))))
`
`Wirtgen America, Inc.
`
`Plaintiff
`v.
`Caterpillar Inc.
`
`Defendant
`
`SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
`OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
`CENTA Corportion, c/o Regal Rexnord Corporation,
`200 State Street, Beloit, WI 53511
`
`To:
`
`(Name of person to whom this subpoena is directed)
`’ Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following
`documents, electronically stored information, or objects, and to permit inspection, copying, testing, or sampling of the
`material:
`Schedule A
`
`Place:
`
`Veritext Legal Solutions
`735 N Water Street | Suite M185 | Milwaukee, WI 53202
`
`Date and Time:
`
`04/03/2023 12:00 pm
`
`’ Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or
`other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party
`may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.
`
`Place:
`
`Date and Time:
`
`The following provisions of Fed. R. Civ. P. 45 are attached – Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and (g), relating to your duty to
`respond to this subpoena and the potential consequences of not doing so.
`03/23/2023
`
`Date:
`
`CLERK OF COURT
`
`OR
`
`Signature of Clerk or Deputy Clerk
`
`/s/ Lucy Yen
`Attorney’s signature
`
`Caterpillar Inc.
`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`, who issues or requests this subpoena, are:
`Lucy Yen, Wilson Sonsini Goodrich & Rosati, P.C, 1301 Avenue f the Americas, 40th Floor, New York, NY
`10019-6022, (212)-999-5800, lyen@wsgr.com
`Notice to the person who issues or requests this subpoena
`A notice and a copy of the subpoena must be served on each party in this case before it is served on the person to whom
`it is directed. Fed. R. Civ. P. 45(a)(4).
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 5 of 33 PageID #: 15458
`
`AO 88B (Rev. 12/13) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)
`
`Civil Action No.
`
`17-770-JDW
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
`
`I received this subpoena for (name of individual and title, if any)
`.
`
`on (date)
`
`’ I served the subpoena by delivering a copy to the named person as follows:
`
`’ I returned the subpoena unexecuted because:
`
`on (date)
`
`; or
`
`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc.:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 6 of 33 PageID #: 15459
`
`AO 88B (Rev. 12/13) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)
`
`(c) Place of Compliance.
`
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
`
` (1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
` (A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
` (B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
` (i) is a party or a party’s officer; or
` (ii) is commanded to attend a trial and would not incur substantial
`expense.
`
` (2) For Other Discovery. A subpoena may command:
` (A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
` (B) inspection of premises at the premises to be inspected.
`
`(d) Protecting a Person Subject to a Subpoena; Enforcement.
`
` (1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
`
` (2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
` (ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
`
` (3) Quashing or Modifying a Subpoena.
`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
` (i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
`(i) disclosing a trade secret or other confidential research,
`development, or commercial information; or
`
`(e) Duties in Responding to a Subpoena.
`
` (1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
`
`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
`
`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
`
`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 7 of 33 PageID #: 15460
`
`SCHEDULE A
`
`The following definitions are applicable to the Requests for Production below:
`
`DEFINITIONS
`
`1.
`
`“You,” “Your,” or “CENTA” shall mean CENTA Corporation, its predecessors and
`
`successors, subsidiaries and related companies, and its present and former officers, directors,
`
`employees, agents, representatives, consultants, attorneys, accountants, entities it was formerly
`
`known as, and others acting or purporting to act on its behalf or subject to its control, including
`
`Regal Rexnord Corporation.
`
`2.
`
`“Action” shall mean the action captioned, Wirtgen America, Inc. v. Caterpillar Inc.,
`
`C.A. No. 17-770-JDW, in the United States District Court for the District of Delaware.
`
`3.
`
`“Wirtgen America” shall mean Plaintiff and Counterclaim-Defendant Wirtgen
`
`America, Inc. in the Action.
`
`4.
`
`“Caterpillar” shall mean Defendant and Counterclaim-Plaintiff Caterpillar Inc. in
`
`the Action.
`
`5.
`
`“Wirtgen America’s Asserted Patents” collectively refers to U.S. Patent Nos.
`
`7,828,309, 8,118,316, 7,530,641, 8,113,592, 9,010,871, 9,656,530, 7,946,788, 8,511,932,
`
`8,690,474, RE48,268, 9,656,530, 8,424,972, 9,879,390, and 9,879,391.
`
`6.
`
`“Communication(s)” shall mean any instance in which any Person has had contact
`
`with any other Person, including by any oral or written utterance, question, comment, inquiry,
`
`notation, or statement of any nature whatsoever, by and to whomever made, including, but not
`
`limited to, any conversation, correspondence, agreement, note, e-mail, voicemail, or other transfer
`
`of Information, whether written, oral, electronic, or by any other means, and including any
`
`Document or other medium which abstracts, digests, records, incorporates, summarizes, describes,
`
`1
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 8 of 33 PageID #: 15461
`
`or transcribes any such Communication, or any subsequent review or discussion of such
`
`Communication, whether occurring at meetings or otherwise.
`
`7.
`
`“Date” means the exact day, month, and year if ascertainable, or if not, Your best
`
`approximation thereof.
`
`8.
`
`“Document(s)” has the meaning prescribed in Rule 34 of the Federal Rules of Civil
`
`Procedure. The term “Document” shall be interpreted in the broadest sense possible and includes
`
`Documents in any form, including by way of example and without limitation, originals and copies
`
`of letters, memoranda, notes, records, minutes, reports, notebooks, messages, telegrams, ledgers,
`
`legal instruments, legal opinions to the extent that they are not protected by the attorney-client
`
`privilege or attorney work product doctrines, agreements, paper and electronic drawings,
`
`specifications, purchase orders, circuit schematics, block diagrams, manuals, test procedures,
`
`sketches, graphs, prints, rough drafts, secretarial notes, work pads, diaries, films, tapes,
`
`photographs, computer disks and other electronic media, books, publications, advertisements,
`
`literature, brochures, price lists, announcements, computer-based simulation tool input and output
`
`files, or other writings or tangible objects whether stored, produced, or reproduced mechanically,
`
`electrically, electronically, photographically, or chemically. Any comment or notation appearing
`
`in any Document, and not part of the original text, is to be considered a separate “Document.”
`
`9.
`
`“Information” means and refers to Communications and Documents as those terms
`
`are defined herein.
`
`10.
`
`“Person” or “Persons” shall include both natural Persons and entities, including,
`
`without limitation, all predecessors in interest, groups, associations, partnerships, corporations,
`
`agencies, or any other legal, business, or governmental entity. The acts “of” a Person are defined
`
`2
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 9 of 33 PageID #: 15462
`
`to include the acts of directors, officers, members, employees, agents, or attorneys acting on the
`
`Person’s behalf.
`
`11.
`
`“Prior Art” means any reference, subject matter, event, or other matter relevant
`
`under 35 U.S.C. § 102 and/or 35 U.S.C. § 103.
`
`12.
`
`“Thing” or “Things” has the meaning prescribed in Rule 34 of the Federal Rules of
`
`Civil Procedure. “Thing” specifically includes, by way of example but not limitation, any disc,
`
`tape, or other electronic media storage device, any product and any model, prototype, or
`
`experimental device or part or assembly thereof.
`
`13.
`
`As used herein, the terms “and” and “or” should be understood either disjunctively
`
`or conjunctively as necessary to bring within the scope of any request all responses that might
`
`otherwise be construed to be outside of its scope.
`
`14.
`
`As used herein, the terms “each,” “any,” and “all” should be understood to include
`
`“each and every, any, and all.”
`
`15.
`
`As used herein, the terms “relate,” “refer,” or “concern” (including any conjugation
`
`thereof) mean directly or indirectly concerning, regarding, evidencing, mentioning, describing,
`
`pertaining to, reflecting, being connected with, comprising, or constituting a subject matter.
`
`16.
`
`As used herein, use of a singular noun shall be construed to include the plural noun,
`
`and use of a plural noun shall be construed to include the singular noun; and the use of a verb in
`
`any tense shall be construed as the use of that verb in all other tenses whenever necessary to bring
`
`within the scope of the request that which might otherwise be construed to be outside its scope.
`
`INSTRUCTIONS
`
`1.
`
`It is Your duty in answering these requests to conduct a reasonable investigation so
`
`that You disclose and produce all available responsive and non-privileged Documents.
`
`3
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 10 of 33 PageID #: 15463
`
`2.
`
`If production of any responsive Documents is being withheld on the ground of the
`
`attorney-client privilege, attorney work product, or any other privilege, immunity, or protection,
`
`please provide a privilege log with the following information for each such Document: (a) the
`
`name of the Document; (b) the name of the person(s) who prepared the Document; (c) the name
`
`of the person(s) to whom the Document was directed or circulated; (d) the date(s) on which the
`
`Document was prepared or transmitted; (e) the name of the person(s) now in possession of the
`
`Document; (f) a description of the subject matter of the Document; and (g) the specific nature of
`
`the privilege or protection claimed with respect to the Document.
`
`3.
`
`You are under a continuing obligation to respond to the requests set forth herein.
`
`Accordingly, if You subsequently gain actual or constructive possession, custody, or control of
`
`any Document called for in the requests set forth herein that has not been produced, You must
`
`produce such Document as soon as possible or provide a written explanation as to why You will
`
`not produce the Document.
`
`4.
`
`To the extent a Document is considered confidential in nature, You may designate
`
`it in accordance with the Protective Order entered in the above-captioned matters, a copy of which
`
`is attached as Exhibit A.
`
`4
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 11 of 33 PageID #: 15464
`
`REQUESTS FOR PRODUCTION
`
`REQUEST FOR PRODUCTION NO. 1:
`
`All Documents and Communications related to the selection and supply of a torsion coupler
`
`for Wirtgen America’s W210, W220, and W250.
`
`REQUEST FOR PRODUCTION NO. 2:
`
`All Documents and Communications related to Wirtgen America’s Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 3:
`
`All Documents and Communications describing, discussing, or referencing any similarities
`
`between CENTA’s torsion coupler supplied to Wirtgen America or Wirtgen GmbH and any of
`
`Wirtgen America’s Asserted Patents.
`
`REQUEST FOR PRODUCTION NO. 4:
`
`Documents sufficient to show the design and development history for engine mounts
`
`supplied to Wirtgen including, without limitation, the torsion coupler for Wirtgen America’s
`
`W210, W220, and W250.
`
`5
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 12 of 33 PageID #: 15465
`
`Exhibit A
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 13 of 33 PageID #: 15466
`Case 1:17-cv-00770-JDW-MPT Document 61 Filed 11/17/21 Page 1 of 21 PageID #: 9776
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`WIRTGEN AMERICA, INC.
`
`Plaintiff,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`CATERPILLAR INC.
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C. A. No. 17-770-RGA
`
`JURY TRIAL DEMANDED
`
`[PROPOSED] STIPULATED AMENDED PROTECTIVE ORDER
`
`This Stipulated Amended Protective Order (“Protective Order”) is made by and between
`Plaintiff Wirtgen America, Inc. (“Wirtgen America”) and Defendant Caterpillar Inc.
`(“Caterpillar”) (collectively, the “Parties”).
`
`WHEREAS, the Parties are in need of discovery in the above-captioned action (the “Civil
`Action”);
`
`WHEREAS, the Parties seek to prevent undue or unwarranted disclosure of non-public,
`confidential, personal, commercial, financial, proprietary, trade secret, know-how, and design
`information and/or materials which may be divulged pursuant to discovery in the Civil Action;
`
`WHEREAS, pursuant to this Court’s Scheduling Order, see D.I. 28, and due to the overlap
`between the Civil Action and In the Matter of Certain Road Milling Machines and Components
`Thereof, Investigation No. 337-TA-1067 (Int’l Trade Comm’n) (the “1067 Investigation”), the
`discovery produced or taken in the 1067 Investigation may be used as if produced or taken in the
`Civil Action;
`
`WHEREAS, the Parties also agree that due to the overlap between the Civil Action and In
`the Matter of Certain Road Construction Machines and Components Thereof, Investigation No.
`337-TA-1088 (Int’l Trade Comm’n) (the “1088 Investigation”), the discovery produced or taken
`in the 1088 Investigation may be used as if produced or taken in the Civil Action; and
`
`WHEREAS, the Parties further agree to and authorize the exchange and use of discovery
`produced or taken in the 1067 Investigation and the 1088 Investigation, including information of
`non-party corporate affiliates of the Parties, such as Wirtgen GmbH, designated in the 1067
`Investigation or the 1088 Investigation as “Confidential Business Information,” “Confidential
`Source Code, Outside Attorneys’ Eyes Only,” or any other designation under the protective orders
`in the 1067 Investigation or the 1088 Investigation (including any amendments) in this Civil
`Action in accordance with this Protective Order.
`
`NOW, THEREFORE, in consideration of the mutual promises herein and pursuant to the
`
`1
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 14 of 33 PageID #: 15467
`Case 1:17-cv-00770-JDW-MPT Document 61 Filed 11/17/21 Page 2 of 21 PageID #: 9777
`
`Federal Rules of Civil Procedure, the Parties agree as follows:
`
`I.
`
`DEFINITIONS
`
`Discovery Material. “Discovery Material” means all items or information, or any part
`A.
`thereof, regardless of the medium or manner generated, stored, or maintained, including, among
`other things, documents, materials, information, responses, answers, testimony, transcripts, or
`tangible things, that are produced, provided, disclosed, or generated in connection with discovery
`in the Civil Action.
`
`Outside Counsel. “Outside Counsel” means the attorneys appearing as counsel for, or who
`B.
`are retained to represent or advise, a Party, and who are not employees of a Party, and each of their
`paralegals, support, and office staff.
`
`Designating Party. “Designating Party” means a Party or non-party person or entity,
`C.
`including a Producing Party (later defined), that designates Discovery Material as Protected
`Information.
`
`Producing Party. “Producing Party” means any Party or non-party person or entity that
`D.
`discloses or produces any Discovery Material in the Civil Action.
`
`Receiving Party. “Receiving Party” means any Party that requests or receives any
`E.
`Discovery Material in the Civil Action.
`
`Expert. “Expert” means a person with specialized knowledge or experience in a matter
`F.
`pertinent to the litigation who has been retained by a Party or its Outside Counsel to serve as an
`expert witness or as a consultant in this Civil Action. This definition includes a professional jury
`or trial consultant retained in connection with this litigation. For the avoidance of doubt, this
`definition of “Expert” excludes an officer, member, owner, or employee of a Party who serves as
`or is retained as an expert in this Civil Action.
`
`Protected Information. “Protected Information” means any Discovery Material that is
`G.
`designated as “CONFIDENTIAL” (later defined) or “HIGHLY CONFIDENTIAL-OUTSIDE
`ATTORNEYS’ EYES ONLY” (later defined), as provided in this Protective Order.
`
`II.
`
`DURATION; COMPUTATION OF TIME
`
`Duration of Protective Order. Even after a final resolution or termination of the Civil
`A.
`Action, including by mediation or settlement, including all appeals, the confidentiality obligations
`imposed by this Protective Order shall remain in effect until a Designating Party agrees otherwise,
`in writing, or the Court directs otherwise.
`
`Conformance with Federal Rules of Civil Procedure. The computation of any period of
`B.
`time prescribed or allowed by this Protective Order shall be governed by the provisions for
`computing time set forth in Federal Rules of Civil Procedure 6(a) and 6(d).
`
`2
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 15 of 33 PageID #: 15468
`Case 1:17-cv-00770-JDW-MPT Document 61 Filed 11/17/21 Page 3 of 21 PageID #: 9778
`
`III.
`
`SCOPE OF PROTECTIVE ORDER
`
`Scope of Protection. The protections conferred by this Protective Order shall cover all
`A.
`Protected Information, including any information copied or extracted therefrom, as well as all
`copies, excerpts, summaries, or other compilations thereof. Such protections shall also extend to
`any pleadings, testimony, conversations, or presentations by any Party or its counsel that might
`discuss, reflect, or reveal Protected Information.
`
`Other Proceedings. By entering this Protective Order and limiting the disclosure of
`B.
`information in this case, the Court does not intend to preclude another court from finding that
`information may be relevant and subject to disclosure in another case. Any person or Party subject
`to this Protective Order who becomes subject to a motion to disclose another Party’s information
`designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS’
`EYES ONLY” pursuant to this Protective Order shall promptly notify that Party of the motion so
`that the Party may have an opportunity to appear and be heard on whether that information should
`be disclosed.
`
`Reservation of Rights. Notwithstanding the provisions herein, nothing in this Protective
`C.
`Order shall prevent or restrict a Designating Party’s disclosure or use of its own Protected
`Information for any purpose.
`
`No Prejudice. This Protective Order is entered into by the Parties without prejudice to the
`D.
`right of either Party to seek further or additional protection of any Discovery Material, or to seek
`to modify this Protective Order in any way.
`
`IV.
`
`DESIGNATION, USE, AND DISCLOSURE OF PROTECTED INFORMATION
`
`Designation of Protected Information. A designation of Discovery Material as
`A.
`“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY”
`constitutes a representation by the Designating Party that the Designating Party has a good faith,
`reasonable basis to believe that the Discovery Material so designated is, in fact, Protected
`Information appropriate for, and entitled to, confidential protection.
`
`Exclusion of Protected Information. The Designating Party shall not designate as
`B.
`“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY”
`any Discovery Material:
`
`i.
`
`that is or has become publicly known through no fault of the Receiving Party;
`
`ii.
`
`that was previously produced, disclosed, and/or provided to the Receiving Party by the
`Producing Party or a third-party person or entity without an obligation of confidentiality,
`not by inadvertence or mistake, and absent direct or indirect solicitation and/or indirect
`circumvention in breach of this Protective Order; or
`
`iii.
`
`that was authorized to be produced, disclosed, and/or provided to the person or individual
`owning or controlling the Protected Information, which may be the Designating Party or
`
`3
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 16 of 33 PageID #: 15469
`Case 1:17-cv-00770-JDW-MPT Document 61 Filed 11/17/21 Page 4 of 21 PageID #: 9779
`
`the Producing Party.
`
`Designation of “CONFIDENTIAL” Discovery Material. The Designating Party may
`C.
`designate and visibly mark as “CONFIDENTIAL”:
`
`i. any of the Designating Party’s Discovery Material which the Designating Party believes
`contains non-public, confidential personal, commercial, financial, proprietary, trade
`secret, know-how, and design information; or
`
`ii. confidential information of a third-party person or entity to whom the Designating Party
`owes an obligation of confidentiality.
`
`Designation of “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY”
`D.
`Discovery Material. The Designating Party may designate and visibly mark as “HIGHLY
`CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY”:
`
`i. any Protected Data (as defined herein); and
`
`ii. any Sensitive Information (as defined herein).
`
`For the purpose of designation pursuant to the Protective Order, designating Discovery Material
`as “HIGHLY CONFIDENTIAL” or “AEO” shall constitute a designation as “HIGHLY
`CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY.”
`
`Protected Data; Sensitive Information. “Protected Data” and “Sensitive Information” are
`E.
`defined herein as follows:
`
`i. Protected Data. “Protected Data” means any personally identifiable information (PII) or
`information that a Party believes to be subject to local, state, federal, or international
`data-protection laws or data-privacy regimes, including (without limitation): the Federal
`Trade Commission Act (FTCA), 5 U.S.C. §§ 41-58, as amended (personal information);
`the Gramm-Leach-Bliley Act (GLBA), 15 U.S.C. § 6801 et seq. (financial information);
`the Health Insurance Portability and Accountability Act (HIPAA) and the regulations
`thereunder, 45 C.F.R. Part 160 and Subparts A and E of Part 164 (health information);
`the Family Educational Rights and Privacy Act (FERPA), 20 U.S.C. § 1232g
`(educational information); the General Data Protection Regulation (GDPR), identified as
`Regulation (EU) 2016/679
` (European Union personal information); Personal
`Information Protection and Electronic Documents Act (PIPEDA), S.C. 2000, c. 5
`(Canadian personal information); and the Federal Law on Protection of Personal Data
`held by Private Parties (published July 5, 2010) (Mexico personal information).
`
`ii. Sensitive Information. “Sensitive Information” means:
`
`a.
`
`the Parties’ non-public financial information, as it relates to costs, revenues, and
`profits;
`
`4
`
`

`

`Case 1:17-cv-00770-JDW-MPT Document 179 Filed 03/23/23 Page 17 of 33 PageID #: 15470
`Case 1:17-cv-00770-JDW-MPT Document 61 Filed 11/17/21 Page 5 of 21 PageID #: 9780
`
`b. Source Code;
`
`c.
`
`information or documents of a third party designated as “Highly Confidential Outside
`Attorney’s Eyes Only,” or designated “Confidential Business Information” of a third
`party in the 1067 Investigation or in the 1088 Investigation, unless the third party
`agrees that such documents may be designated “CONFIDENTIAL” under this
`protective order.
`
`d. such other information or documents, not otherwise excluded from a Highly
`Confidential designation, that the Parties agree in writing should be so designated.
`
`F. Discovery produced or taken in the 1067 Investigation and the 1088 Investigation. On entry
`of this