United States District Court, N.D. California
ORDER GRANTING AMD'S MOTION SEEKING PERMISSION TO
DISCLOSE SOURCE CODE AND TECHNICAL DOCUMENTS Re: Dkt. No.
ILLSTON United States District Judge.
the Court is AMD's motion seeking permission to disclose
third-party Imagination Technologies, LLC's source code
and technical documents to AMD's two technical experts,
Dr. William Mangione-Smith and Dr. Andrew Wolfe. Dkt. No.
208. Pursuant to Civil Local Rule 7-1(b), the Court
determines that this matter is appropriate for resolution
without oral argument and VACATES the hearing scheduled for
July 28, 2017. For the foregoing reasons, the Court GRANTS
a patent infringement suit between plaintiffs Advanced Micro
Devices, Inc. and ATI Technologies ULC (collectively,
“AMD”) and defendants LG Electronics, Inc., LG
Electronics U.S.A., Inc., and LG Electronics Mobilecomm
U.S.A., Inc. (collectively, “LG”). In Fall 2016,
AMD and LG entered into a protective order for this
litigation. Dkt. No. 120. The protective order states that
certain highly confidential information may be disclosed to
experts only if: (i) “reasonably necessary” for
the litigation; (ii) the experts agree to be bound by the
protective order; and (iii) the party who wishes to disclose
highly confidential materials to its expert first makes a
written request to the designating party. Id.
¶¶ 7.3(b); 7.4(a)(2). The designating party has 14
days from receipt of the request to object to disclosure, and
if the parties cannot resolve an objection through meet and
confer, the party seeking disclosure may file a motion
requesting court permission to disclose the information to
its expert. Id. ¶¶ 7.4(b)-(c). Similar
procedures govern disclosure of source code. See Id.
parties filed an addendum to the protective order to include
non-party Imagination Technologies LLC's
(“Imagination's”) confidential materials.
See Dkt. No. 152. According to AMD, 125 LG accused
products in this case utilize Imagination graphics
processors. Fahrenkrog Decl. (Dkt. No. 208-1) ¶ 3. AMD
seeks to disclose certain Imagination source code and
technical documents to two of its experts to aid AMD's
infringement analysis as to these products.
February 10 and 15, 2017, pursuant to the protective order,
AMD notified Imagination of its intent to disclose
Imagination's technical documents and source code to
AMD's two technical experts, Drs. Mangione-Smith and
Wolfe. See Fahrenkrog Decl., Exs. E, F (Dkt. Nos.
208-6, 208-7). Imagination objected and the parties have been
unable to resolve their disagreement through the meet and
2009, Dr. Mangione-Smith has provided “[c]onsulting and
intellectual property services” as the sole proprietor
of Phase Two LLC. Fahrenkrog Decl., Ex. G (Dkt. No. 208-8).
He is a named inventor on dozens of patents, and has served
as an expert consultant in a range of intellectual property
matters. Id. As an expert, Dr. Mangione-Smith has
recently been retained by organizations such as Future Link
Systems, TiVo, Innovative Memory Solutions, Advanced Silicon
Technologies, Ericsson, and many others. See Id. He
most often provides expert services on behalf of patent
plaintiffs in suits against companies like Apple, Samsung,
Cisco, Google, Verizon, Dell, and others. See id.
2002, Dr. Wolfe has consulted on “processor technology,
computer systems, consumer electronics, software, design
tools, and intellectual property issues.” Fahrenkrog
Decl., Ex. H (Dkt. No. 208-9). His sample clients include
IBM, Dell, Motorola, Samsung, HTC, Huawei, Nvidia, and more.
Id. Dr. Wolfe has also served as an expert witness
in an array of patent cases. See id.
seeks an order from the Court granting AMD permission to
disclose Imagination's documents and source code to Drs.
Mangione-Smith and Wolfe. See Mot. (Dkt. No. 208).
the ordinary course of litigation, a party is owed some
degree of deference ‘in retaining and preparing an
expert with the relevant industry experience and
availability.'” GPNE Corp. v. Apple Inc.,
12-cv-2885-LHK (PSG), 2014 WL 1027948, at *1 (N.D. Cal. Mar.
13, 2014) (quoting Apple Inc. v. Samsung Elecs. Co.,
No. 11-cv-1846-LHK (PSG), 2011 U.S. Dist. LEXIS 147515, at *2
(N.D. Cal. Dec. 22, 2011)). In some cases, however,
“that interest must be balanced against an increased
risk of improper use or disclosure . . . .” GPNE
Corp., 2014 WL 1027948, at *1. In cases where a proposed
expert's work in the field “creates a substantial
risk” of misusing the information, disclosure may be
permitted only where the expert “possesses unique
expertise[.]” See Symantec Corp. v. Acronis
Corp., No. 11-cv-5310-EMC (JSC), 2012 WL 3582974, at *3
(N.D. Cal. Aug. 20, 2012).
does not object to disclosure of its materials to
any expert, it objects only to disclosure to
AMD's two chosen experts. The Court must determine
whether, on this record, disclosure of Imagination's
highly confidential information to Drs. Mangione-Smith and
Wolfe presents a concrete risk of misuse. The Court concludes
that it does not.
argues that both experts present a substantial risk of
subconsciously misusing Imagination confidential information
given their active patent consulting businesses. Imagination
contends that once Drs. Mangione-Smith and Wolfe have
performed the necessary analysis of Imagination's
documents and source code, knowledge of that sensitive
information will be “infused throughout their
subsequent . . . activities in th[e] field.” Opp'n
(Dkt. No. 216) at 3-4. Imagination further argues that the
experts will use the information “[i]n any subsequent
activity involving Imagination, ” including an ITC
investigation in which Drs. Mangione-Smith and Wolfe have
been designated as experts.Id. at 4. Imagination
further argues that Drs. Mangione-Smith and Wolfe are
prolific inventors, and thus present an even greater risk of