ORDER RE: JOINT DISCOVERY LETTER [DOCKET NO. 113]
DONNA M. RYU, Magistrate Judge.
Before the court is a joint discovery letter submitted by Plaintiff Synopsys Inc. and Defendant Mentor Graphics Corp. [Docket No. 113.] Mentor seeks entry of a protective order in this litigation that mirrors the protective order in other litigation between the parties pending before the District of Oregon. Synopsys urges the continued use of this district's model protective order ("Model PO"), which has by default governed the case since discovery began in March 2013. In particular, Synopsys wants the protection of the prosecution bar contained in the Model PO, while Mentor does not. On January 14, 2014, the court ordered the parties to submit supplemental briefing addressing the extent to which the issues, subject matters of the inventions, and subject matters of highly confidential information overlapped between the Oregon case and this case. [Docket No. 122.] The court held a hearing on the letter on January 23, 2014. For the reasons stated below and at the hearing, Mentor's motion is granted in part and denied in part.
On December 21, 2012, Synopsys filed a complaint against Mentor alleging four counts of patent infringement. [Docket No. 1.] This lawsuit is only one of four active district court actions between Synopsys and Mentor. The other three actions have been consolidated into one and are pending in the District of Oregon.
The parties are apparently also engaged in litigation in Japan and in an inter partes review ("IPR") before the Patent and Trademark Office, see Letter at 3, but have not provided this court with details about the subject matter of those proceedings.
Synopsys avers that it is a direct competitor of Mentor, as they are the first and third largest providers of electronic design automation tools in the world. Letter at 6.
A. The Oregon Protective Order
On January 26, 2011, the Oregon court entered a stipulated protective order (the "Oregon PO"). At the time, Synopsys was not a party to the Oregon litigation, as it had not yet acquired EVE.
While the Oregon PO does not have the Model PO's prosecution bar, it does contain provisions that are not in the Model PO that reduce the risk of disclosing sensitive information to individuals involved in the patent prosecution process. For example, the Oregon PO states that materials designated as "HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY" may be viewed at outside counsel's office by two Designated In-House Counsel (and their administrative staff or paralegals), provided that those Designated In-House Counsel are "(i) not involved in competitive decision-making activities such as pricing and product design; or (ii) not involved in patent prosecution related to emulation, functional verification, or logic synthesis tools, " and that the receiving party notify the designating party in writing that those materials will be disclosed to the in-house counsel. Oregon PO at ¶ 10. Furthermore, "[a]ny Designated In-House Counsel shall not engage in any competitive decision-making or restricted patent prosecution for six months after the individual's last access of HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY' information, " id., and may not possess such documents but may only view them at "at outside counsel's office." Id. at ¶ 10(c).
On July 10, 2013, after the other case that Synopsys filed in this district was transferred to the District of Oregon, Synopsys moved the Oregon court to modify the Oregon PO to, inter alia, add a prosecution bar. See Docket No. 394, Mentor Graphics, No. 10-cv-954-MO (D. Or. July 10, 2013). The court denied the motion and declined to add a prosecution bar to the Oregon PO. See Docket No. 409, Mentor Graphics, No. 10-cv-954-MO (D. Or. July 19, 2013).
B. The Model Protective Order
This district's Patent Local Rule 2-2 states that "the Protective Order authorized by the Northern District of California shall govern discovery unless the Court enters a different protective order. The approved Protective Order can be found on the Court's website." Thus, by default, the parties have been operating under the Model PO since discovery began in March 2013. However, the parties appear to have agreed upon some modifications to the Model PO; Mentor avers that the parties have employed certain provisions of the Oregon PO regarding source code and product inspection that do not have parallels in the Model PO. See Docket No. 107 at 10.
The Model PO includes a prosecution bar provision that states:
Absent written consent from the Producing Party, any individual who receives access to "HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY" or "HIGHLY CONFIDENTIAL - SOURCE CODE" information shall not be involved in the prosecution of patents or patent applications relating to [insert subject matter of the invention and of highly confidential technical information to be produced], including without limitation the patents asserted in this action and any patent or application claiming priority to or otherwise related to the patents asserted in this action, before any foreign or domestic agency, including the United States Patent and Trademark Office ("the Patent Office"). For purposes of this paragraph, "prosecution" includes directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims. To avoid any doubt, "prosecution" as used in this paragraph does not include representing a party challenging a patent before a domestic or foreign agency (including, but not limited to, a reissue protest, ex parte reexamination or inter ...