UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA
April 23, 2009
SONY ELECTRONICS, INC. PLAINTIFF,
GUARDIAN MEDIA TECH., INC., DEFENDANTS.
The opinion of the court was delivered by: Hon. Anthony J. Battaglia U.S. Magistrate Judge United States District Court
Order Striking Paragraph 13 of the Proposed Protective Order Without Prejudice and Entering the Protective Order As Amended [Doc. Nos. 175 and 176]
On April 17, 2009, the parties lodged a proposed protective order and filed very limited briefing [Doc. Nos. 175 and 176] regarding a dispute over the inclusion of paragraph 13 of the proposed protective order.*fn1 The parties were able to reach agreement as to most terms of the protective order, however, the parties reached impasse over whether in-house counsel should be allowed to review "Counsel's Eyes Only" or "Attorney's Eyes Only" designated documents in this patent litigation case. The Court agrees with the Non-Guardian Parties'*fn2 assertion that the Court must balance the need for access to confidential information by in-house counsel against the risk of inadvertent disclosure, where in-house counsel is involved in "competitive decisionmaking" or where such documents contain competitively sensitive material. U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984); Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 19920 (citing U.S. Steel). However, the Courts finds the Non-Guardian Parties assertion that the licensing and settlement agreements are not competitively sensitive material unpersuasive and without merit. The licensing and settlement agreements at issue, are those that Guardian entered into with over thirty (30) separate companies who are not parties to this litigation and clearly involve the patents in suit. It is undisputed that many of the parties who have settled with and/or are licensees of the Guardian patents in suit, are direct competitors of the Non-Guardian Parties and this, in combination with the fact that many of these agreements contain provisions prohibiting disclosure to in-house counsel, belies such an assertion. Furthermore, the Court notes that the Non-Guardian Parties have failed to articulate a single reason to support the claimed need for disclosure of such competitively sensitive material to in-house counsel and in the absence of any articulated need, the balance clearly tips in favor of limiting disclosure. As such, Guardian's request to strike paragraph 13 of the proposed protective order is GRANTED without prejudice to the Non-Guardian Parties subsequent renewal of the challenge to the confidential classification of this material at some later date when an articulated need for the disclosure to in-house counsel can be demonstrated.
IT IS SO ORDERED.