United States District Court, N.D. California, San Jose Division
ORDER RE DISCOVERY DISPUTE JOINT REPORT, NO. 1, RE:
DKT. NO. 124
R. LLOYD, United States Magistrate Judge
sue for alleged misuse of claimed trade secrets concerning
designs and methodology for building data centers. Discovery
Dispute Joint Report (DDJR) No. 1 presents a dispute as
between plaintiffs, on the one hand, and defendant Facebook,
Inc. (Facebook) on the other. At issue: whether
Facebook's retained testifying expert, KC Mares, may
access and use material that plaintiffs designated
“Confidential” or “Highly
Confidential-Attorney's Eyes Only” under the
stipulated protective order. (Dkt. 54). The matter is deemed
suitable for determination without oral argument. Civ. L.R.
7-1(b). Upon consideration of the parties' respective
arguments,  this court rules as follows:
curriculum vitae, Mares describes himself as the
“[e]xecutive leader of global data center strategy,
development, design, procurement and operations.” (Dkt.
124-1 at 6). He further states that he has “led the
design and construction of $5-10 billion of data centers and
[has] negotiated and managed data center and network services
with nearly every major provider.” (Id.).
Mares has a consulting business, MegaWatt Consulting, Inc.,
in which he advises clients on data center design, operation,
site selection, development, and energy efficiency.
(Id.). Among the services and experience offered to
clients is: “Led the development of various software,
renewable energy and technology products and a reviewer of
many new technologies used within the data center space . .
..” and “Lead design teams for many complex data
center projects, creating innovations and PUEs of less than
previously considered allowing Mares to access their claimed
confidential information, provided that he signed a
declaration agreeing to refrain from certain activities.
Among other things, plaintiffs' proposed declaration
required Mares to agree to the following statements:
• “I have not designed data centers and have no
current plans to design data centers”; and
• “I will not . . . provide designs for data
centers during the pendency of the Litigation and for one
year following the termination of the Litigation.”
• “I will not . . . .consult on the design or
build of an air handling system during the pendency of the
Litigation and for one year following the termination of the
(Dkt. 124, DDJR 1 at 7; Dkt. 125-2 at 3). Mares had no
problem with other aspects of plaintiffs' proposed
declaration (see Dkt. 125-1); and, Facebook contends
that any concerns about plaintiffs' confidential
information are sufficiently addressed by portions of the
declaration that Mares offered to sign, including that for
the duration of this litigation (and for one year after its
termination), he would recuse himself from decisions
involving subcontractor selection/evaluation if plaintiffs
were among the bidders; would not provide engineering or
architectural services; and would not design or build an air
handling system. (Dkt. 125-1 at 3). Defendant argues that
this proffered declaration, coupled with the terms of the
stipulated protective order, are sufficient to address
plaintiffs' concerns. In plaintiffs' view,
defendant's proffer is insufficient without the
additional assurances re data center design. The deal-breaker
was that Mares could not sign off on the above-quoted
representations. Facebook says that is because Mares is asked
to consult on data center design from time to time.
their desired declaration, plaintiffs oppose Mares'
access to their confidential information, arguing that his
ongoing consulting work in data center design presents an
unacceptable risk of inadvertent misuse. They fear that
Mares, once having had access to their confidential
information, will not be able to compartmentalize their
claimed trade secrets from other information he obtains and
uses in the course of his work. Facebook contends that
plaintiffs' concerns are unfounded.
resolve this dispute, the court balances Facebook's
interest in selecting the experts most beneficial to its case
with plaintiffs' interest in protecting their claimed
trade secrets from disclosure to competitors. Symantec
Crop. v. Acronis Corp., No. 11-5310 EMC (JSC), 2012 WL
3582974 at *3 (N.D. Cal., Aug. 20, 2012). As the parties
opposing disclosure, plaintiffs bear the burden of
demonstrating that the risk of harm that disclosure to Mares
would entail (under any proposed safeguards) outweighs
Facebook's need for Mares' access to such materials.
primary point of contention is whether Mares is a competitor
of plaintiffs. Under the stipulated protective order, an
expert cannot be “a past or current employee of a Party
or of a Party's competitor” or “anticipated
to become an employee of a Party or of a Party's
competitor.” (Dkt. 54 ¶ 2.7). Facebook contends
that Mares is not a “competitor” in any sense of
the word because, unlike plaintiffs, Mares does not himself
design or build data centers. Rather, he advises clients
about them; and, simply consulting on aspects of data center
design, says Facebook, does not make Mares a competitor.
Here, defendant cites Rheumatology Diagnostics Lab., Inc.
v. Aetna, Inc., No. 12-cv-05847-WHO, 2015 WL 1744330 at
*11 (N.D. Cal., Apr. 15, 2015) in which the court concluded
that an expert was not defendant's competitor where his
services were similar, but “not the same thing”
as defendant's (i.e., he helped physicians install and
operate clinical laboratories, whereas defendant provided
physicians with clinical laboratory services).
is not a “competitor” of plaintiffs in any
traditional or conventional sense. Even so, this court finds
that there is a potential risk of inadvertent disclosure of
plaintiffs' confidential information because the record
suggests that a purpose of Mares' consultancy is to
advise, inform, and guide decisions re data center design.
See, e.g., Isis Pharmaceuticals, Inc. v.
Santaris Pharma A/S Corp., No. 11cv2214-GPC (KSC), 2013
WL 3367575 at *6 (S.D. Cal., July 5, 2013) (finding a risk of
inadvertent disclosure where the essence of the proposed
expert's consulting practice was “to impact, shape,
and inform decisions” re the subject technology).
plaintiffs point out that Mares actively consults in the very
field at issue. Courts have concluded that a “proposed
expert's ongoing work in the field created a substantial
risk of misuse such that he should only be allowed access to
the confidential information if he possessed ‘unique
expertise.” GPNE Corp. v. Apple, Inc., No.
5:12-cv-02885-LHK (PSG), 2014 WL 1027948 at *1-2 (N.D. Cal.,
Mar. 13, 2014) (denying access to confidential materials by
an expert who actively consulted with plaintiff's
competitors and where there was no showing that he had unique
qualifications that would make him better suited than any
other expert); Symantec Corp., 2012 WL 3582974 at
*2-3 (denying access to confidential materials where the
expert offered consulting and analysis in the very field at
issue and there was no showing that the expert had unique
knowledge that could not be found in another expert). Cf.
Advanced Semiconductor Materials Am. Inc. v. Applied
Materials Inc., No. 95-20169, 1996 WL 908654, at *3
(N.D. Cal. Oct. 28, 1996) (allowing access to confidential
materials by an expert who had not consulted on the
technology at issue for four years).
court wonders whether anyone Facebook might want to use would
be able to sign off on the representations plaintiffs desire,
namely that the proposed expert has not designed data centers
and has no plans to do so. Nevertheless, the court
concludes that, on balance, the risk of inadvertent
disclosure is not outweighed by prejudice to Facebook. Here,
as in GPNE and Symantec Corp., defendant
has not identified any unique qualifications or knowledge
Mares has that make him better suited to serve than any other
expert. Cf Isis Pharmaceuticals, Inc., 2013 WL
3367575 at *7-8 (allowing ...