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IN THE UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS

AUSTIN DIVISION

INTELLECTUAL VENTURES II LLC, 

Plaintiff/Counter-Defendant, 

v. 

VMWARE, INC., 

Defendant/Counter-Plaintiff. 

Civil Action No. 1:20-cv-00457-ADA 

JURY TRIAL DEMANDED 

PROTECTIVE ORDER 

 WHEREAS, Plaintiff Intellectual Ventures II LLC (“IV”) and Defendant VMware, Inc. 

(“VMware”) (together “the Parties”) expect discovery in the above-captioned action, including 

any appeals therefrom (this “Litigation”), to encompass certain information that may constitute 

proprietary, confidential, commercially sensitive, trade secrets, and/or other confidential research, 

development, business, or commercial information. If such information is disclosed or 

disseminated in an unprotected manner, it may cause substantial harm to Plaintiff, Defendant, 

and/or nonparties, including loss of competitive advantage, loss of existing business, and loss of 

business opportunities. Accordingly, the Parties, by and between their representative counsel, 

have stipulated and agreed, pursuant to Rule 26(c) of the Federal Rules of Civil Procedure and 

subject to the approval of the Court, that the following Stipulated Protective Order (the “Protective 

Order”) shall govern the handling of Discovery Material in the Litigation. 

1. Each Party may designate as confidential for protection under this Order, in 

whole or in part, any document, information or material that constitutes or includes, in whole 

or in part, confidential or proprietary information or trade secrets of the Party or a Third Party 

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to whom the Party reasonably believes it owes an obligation of confidentiality with respect to 

such document, information or material (“Protected Material”). Protected Material shall be 

designated by the Party producing it by affixing a legend or stamp on such document, 

information or material as follows: “CONFIDENTIAL.” The word “CONFIDENTIAL” 

shall be placed clearly on each page of the Protected Material (except deposition and hearing 

transcripts) for which such protection is sought. For deposition and hearing transcripts, the 

word “CONFIDENTIAL” shall be placed on the cover page of the transcript (if not already 

present on the cover page of the transcript when received from the court reporter) by each 

attorney receiving a copy of the transcript after that attorney receives notice of the designation 

of some or all of that transcript as “CONFIDENTIAL.” 

2. “Designated Materials”1

 means any information of any type, kind, or character 

that is designated as “CONFIDENTIAL,” “RESTRICTED – ATTORNEYS’ EYES 

ONLY,” or “RESTRICTED – SOURCE CODE” by any of the supplying or receiving 

persons, whether it be a document, source code, information contained in a document, 

information revealed during a deposition, information revealed in an interrogatory answer, or 

otherwise. 

3. With respect to Designated Materials, subject to provisions herein and unless 

otherwise stated, this Order governs, without limitation: (a) all documents, electronically 

stored information, and/or things as defined by the Federal Rules of Civil Procedure; (b) all 

pretrial, hearing, or deposition testimony, or documents marked as exhibits for identification 

in depositions and hearings; (c) pretrial pleadings, exhibits to pleadings and other court filings; 

 

1 The term Designated Materials is used throughout this Protective Order to refer to the class of 

materials designated as “CONFIDENTIAL,” “RESTRICTED – ATTORNEYS’ EYES 

ONLY,” or “RESTRICTED – SOURCE CODE,” both individually and collectively.

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(d) affidavits; and (e) stipulations. All copies, reproductions, extracts, digests and complete 

or partial summaries prepared from any Designated Materials shall also be considered 

Designated Materials and treated as such under this Order. 

4. A designation of Protected Material (i.e., “CONFIDENTIAL,” “RESTRICTED - ATTORNEYS’ EYES ONLY,” or “RESTRICTED - SOURCE 

CODE”) may be made at any time. Inadvertent or unintentional production of documents, 

information or material that has not been designated as Designated Material, shall not be 

deemed a waiver in whole or in part of a claim for confidential treatment. Any Party that 

inadvertently or unintentionally produces Protected Material without designating it as 

Designated Material may request destruction of that Protected Material by notifying the 

recipient(s), as soon as reasonably possible after the producing Party becomes aware of the 

inadvertent or unintentional disclosure, and providing replacement Protected Material that is 

properly designated. The recipient(s) shall then destroy all copies of the inadvertently or 

unintentionally produced Protected Materials and any documents, information or material 

derived from or based thereon. 

5. “CONFIDENTIAL” documents, information and material may be disclosed 

only to the following persons, except upon receipt of the prior written consent of the 

designating Party, upon order of the Court: 

a. outside counsel of record in this Action for the receiving Party; 

b. supporting personnel employed in the law firm(s) of outside counsel of 

record, such as attorneys, paralegals, legal translators, legal secretaries, 

legal clerks and shorthand reporters to whom it is reasonably necessary to 

disclose the information for this litigation; 

c. the officers, directors, and employees of the receiving Party to whom 

disclosure is reasonably necessary for this litigation, including in-house 

counsel, paralegals, eDiscovery teams, and secretarial staff; 

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d. outside consultants or experts and their staff (i.e., not existing employees or 

affiliates of a Party or an affiliate of a Party) retained for the purpose of this 

litigation, provided that: 

i. such consultants or experts and their staff are not presently employed 

by the Parties or competitors to a Party for purposes other than this 

Action; 

ii. before access is given, the consultant or expert has completed the 

Undertaking attached as Appendix A hereto and the same is served 

upon the producing Party with a current curriculum vitae of the 

consultant or expert at least five (5) business days before access to 

the Protected Material is to be given to that consultant or expert, so 

as to allow the producing Party to object to and notify the receiving 

Party in writing that it objects to disclosure of Protected Material to 

the consultant and/or expert. Along with the curriculum vitae, the 

following information shall be provided: employment history for 

the past three years and a listing of cases in which the witness has 

testified as an expert at trial or by deposition within the preceding 

five years. The Parties agree to promptly confer and use good faith 

to resolve any such objection. If the Parties are unable to resolve any 

objection, the objecting Party may file a motion with the Court 

within ten (10) business days of the notice, or within such other time 

as the Parties may agree, seeking a protective order with respect to 

the proposed disclosure. The objecting Party shall have the burden 

of proving the need for a protective order. No disclosure shall occur 

until all such objections are resolved by agreement or Court order; 

e. independent litigation support services, including persons working for or as 

court reporters, contract attorneys, videographers, translators, graphics or 

design services, jury or trial consulting services, mock jurors, document 

imaging and photocopying services, and database services retained by 

counsel and reasonably necessary to assist counsel with the litigation of this 

Action, provided that all such outside vendors agree to maintain the 

confidentiality of Designated Material; 

f. any insurers of the receiving Party to whom disclosure is reasonably 

necessary for purposes of this litigation provided that all such insurers agree 

to maintain the confidentiality of Designated Material; 

g. the Court and its personnel; 

h. any mediator who is assigned to hear this matter, and his or her staff, subject 

to their agreement to maintain confidentiality to the same degree as required 

by this Protective Order; and 

i. an author, signatory, or prior recipient of the document or the original 

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source of the CONFIDENTIAL information. Such person shall be given 

access only to the specific document or information therein that the person 

authored, signed, or previously received. 

6. A Party shall designate documents, information or material as 

“CONFIDENTIAL” only upon a good faith belief that the documents, information or material 

contains confidential or proprietary information or trade secrets of the Party or a third party to 

whom the Party reasonably believes it owes an obligation of confidentiality with respect to such 

documents, information or material. 

7. Documents, information or material produced pursuant to any discovery request in 

this Action, or pursuant to any discovery request in Intellectual Ventures II LLC v. VMware, Inc.,

USDC WD Texas Case No: 1:20-cv-1075-ADA, including but not limited to Protected Material 

designated as Designated Material, shall be used only by the Parties in the litigation of this Action 

and in the litigation of Case No: 1:20-cv-1075-ADA, and shall not be used for any other purpose. 

However, notwithstanding the foregoing, a producing party may designate documents, 

information or material as permitted for use only in this Action. Any person or entity who obtains 

access to Designated Material or the contents thereof pursuant to this Order shall not make any 

copies, duplicates, extracts, summaries or descriptions of such Designated Material or any portion 

thereof except as may be reasonably necessary in the litigation of this Action. Any such copies, 

duplicates, extracts, summaries or descriptions shall be classified Designated Materials and subject 

to all of the terms and conditions of this Order. 

8. To the extent a producing Party believes that certain Protected Material qualifying 

to be designated CONFIDENTIAL is so sensitive that its dissemination deserves even further 

limitation, the producing Party may designate such Protected Material “RESTRICTED -- 

ATTORNEYS’ EYES ONLY,” or to the extent such Protected Material includes computer source 

code and/or associated information such as comments and revision histories, configuration 

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information, and header files (“Source Code Material”), the producing Party may designate such 

Protected Material as “RESTRICTED - SOURCE CODE.” 

9. For Protected Material designated RESTRICTED - SOURCE CODE, access to, 

and disclosure of, such Protected Material shall be limited to individuals listed in paragraphs 5(ab) and (d-e) and (g-i). For Protected Material designated RESTRICTED -- ATTORNEYS’ 

EYES ONLY, access to, and disclosure of, such Protected Material shall be limited to individuals 

listed in paragraphs 5(a-b) and (d-i). Additionally, each side may designate up to and including 

two (2) in-house counsel, to whom disclosure is reasonably necessary for this litigation, to gain 

access to, and disclosure of, such RESTRICTED -- ATTORNEYS’ EYES ONLY material, 

provided that the designated in-house counsel agree to be bound by this Protective Order, are 

identified to the producing Party prior to receiving the RESTRICTED -- ATTORNEYS’ EYES 

ONLY material, and complete the Undertaking attached as Appendix A hereto and the same is 

served upon the producing Party at least five (5) business days before access to the Protected 

Material is to be given to that in-house counsel, so as to allow the producing Party to object 

to and notify the receiving Party in writing that it objects to disclosure of Protected Material 

to the in house counsel. The Parties agree to promptly confer and use good faith to resolve 

any such objection. If the Parties are unable to resolve any objection, the objecting Party may 

file a motion with the Court within ten (10) business days of the notice, or within such other 

time as the Parties may agree, seeking a protective order with respect to the proposed 

disclosure. The objecting Party shall have the burden of proving the need for a protective 

order. No disclosure shall occur until all such objections are resolved by agreement or Court 

order. If designated in house counsel is given access to the Protected Material designated 

RESTRICTED -- ATTORNEYS’ EYES ONLY, the Protected Material designated 

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RESTRICTED -- ATTORNEYS’ EYES ONLY will, at all times, be maintained and accessed 

at the offices of outside counsel of record and shall not be stored, delivered to, viewed, or 

maintained or otherwise have access to Protected Material designated RESTRICTED -- 

ATTORNEYS’ EYES ONLY at the physical location or on the devices of a Party. 

Notwithstanding the foregoing, if designated in house counsel is given access to the Protected 

Material designated RESTRICTED -- ATTORNEYS’ EYES ONLY, the Protected Material 

designated RESTRICTED -- ATTORNEYS’ EYES ONLY may also be made available for 

their review on a password protected network site; if made available as such, the designated in 

house counsel shall not download a local copy of the Protected Material designated 

RESTRICTED -- ATTORNEYS’ EYES ONLY or otherwise share, display to others, screen 

capture, transcribe or print copies of this material. 

10. For Protected Material designed RESTRICTED – SOURCE CODE, the 

following additional restrictions apply: 

a. Access to a Party’s source code material shall be provided only on one “standalone” computer (that is, the computer may not be linked to any network, 

including a local area network (“LAN”), an intranet or the Internet). Use or 

possession of any input/output device or other electronic device (e.g., USB 

memory stick, cameras, or any camera-enabled device, laptop, cellular 

telephones, etc.) is prohibited while in the room containing the stand-alone 

computer. 

The reviewer shall be allowed to take notes, and such notes shall be provided 

to the reviewing Party without review by the producing Party. The notes should 

not include verbatim copies of the source code itself. The stand-alone computer 

shall be provisioned with software sufficient to review and search the source 

code on the stand-alone computer. Upon the reviewing Party’s request, other 

commercially available software tools for viewing and searching source code 

shall be installed on the computer, provided that (a) the reviewing Party 

possesses an appropriate license to such software tools; and (b) the producing 

Party approves such software tools (the approval of which shall not be 

unreasonably withheld). Such request and software shall be provided at least 

seven (7) business days in advance of the date upon which the reviewing Party 

wishes to have the additional software tools available for use on the computer. 

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The stand-alone computer may be connected to a printer solely for the limited 

purposes permitted pursuant to paragraph 10(h) below. Additionally, the standalone computer may only be located at the offices of the producing Party’s 

outside counsel (unless mutually agreed upon by the reviewing and producing 

Parties); 

b. The reviewing Party shall make reasonable efforts to restrict its requests for 

such access to the stand-alone computer to normal business hours, which for 

purposes of this paragraph shall be 8:00 a.m. through 6:00 p.m. local time, 

excluding holidays. The reviewing Party shall also provide the producing Party 

at least 48 hours-notice of intent to review the stand-alone computer prior to 

being given access. This request shall be made in writing to outside counsel of 

record for the producing Party and shall include the first and last name(s) of the 

person(s) who intend to review the stand-alone computer. The Parties agree to 

cooperate in good faith such that maintaining the producing Party’s Source 

Code Material at the offices of its outside counsel shall not unreasonably hinder 

the reviewing Party’s ability to efficiently and effectively conduct the 

prosecution or defense of this Action; 

c. The producing Party shall provide the reviewing Party with information 

explaining how to start, log on to, and operate the stand-alone computer in order 

to access the produced Source Code Material on the stand-alone computer; 

d. The producing Party will produce Source Code Material in computer searchable 

format on the stand-alone computer as described above; 

e. A reviewing Party may include excerpts of Source Code Material in a pleading, 

exhibit, expert report, discovery document, deposition transcript, or other Court 

document, provided that the documents containing such Source Code Material 

are appropriately marked under this Order, restricted to those who are entitled 

to have access to them as specified herein, and, if filed with the Court, filed 

under seal in accordance with the Court’s rules, procedures and orders; 

f. To the extent portions of Source Code Material are quoted in a Source Code 

Document, either (1) the entire Source Code Document will be stamped and 

treated as RESTRICTED - SOURCE CODE or (2) those pages containing 

quoted Source Code Material will be separately stamped and treated as 

RESTRICTED - SOURCE CODE; 

g. No person shall copy, e-mail, transmit, upload, download, print, photograph or 

otherwise duplicate any portion of the designated Source Code Material, except 

that the reviewing Party may request a reasonable number of pages of Source 

Code Material to be printed on watermarked or colored pre-bates numbered 

paper, which shall be provided by the producing Party. 

No more than 250 pages of the total Source Code Material produced by a 

producing Party may be in printed form at any one time. No more than 25 pages 

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of continuous Source Code Material will be printed without the authorization 

of the producing Party. Notwithstanding the foregoing, the reviewing Party 

may request to print additional total pages, or continuous pages, of Source Code 

Material in excess of the amounts stated in this paragraph, which request(s) the 

producing Party will not unreasonably deny upon a showing of good cause. If 

additional pages are requested and objected to, the objecting Party shall 

have the burden to seek relief from the Court within ten (10) business days 

of the objection. 

Within 4 business days or such additional time as necessary due to volume 

requested, the producing Party will provide a copy of the requested material on 

watermarked or colored paper bearing Bates numbers and the legend 

“RESTRICTED - SOURCE CODE” unless objected to as discussed below. 

The printed pages shall constitute part of the Source Code Material produced 

by the producing Party in this action. At the reviewing Parties’ request, up to 

two additional sets (or subsets) of printed Source Code Material may be 

requested and provided by the producing Party in a timely fashion. Such 

additional copies of the same source code shall not count toward the 250 page 

restriction above. 

h. No electronic copies of Source Code Material shall be made without prior 

written consent of the producing Party, except as necessary to create documents 

which, pursuant to the Court’s rules, procedures and order, must be filed or 

served electronically. 

i. If the reviewing Party’s outside counsel, consultants, or experts obtain printouts 

or photocopies of Source Code Material, the reviewing Party shall ensure that 

such outside counsel, consultants, or experts keep the printouts or photocopies 

in a secured locked area in the offices of such outside counsel, consultants, or 

expert. The reviewing Party may also temporarily keep the printouts or 

photocopies at: (i) the Court for any proceedings(s) relating to the Source Code 

Material, for the dates associated with the proceeding(s); (ii) the sites where any 

deposition(s) relating to the Source Code Material are taken, for the dates 

associated with the deposition(s); and (iii) any intermediate location reasonably 

necessary to transport the printouts or photocopies (e.g., a hotel prior to a Court 

proceeding or deposition); and 

j. Any technical advisor retained on behalf of a reviewing Party who is to be given 

access to a producing Party’s Source Code Material (whether in electronic form 

or otherwise) must agree in writing not to perform software development work 

directly or indirectly intended for commercial purposes relating to any 

functionality covered by the Source Code Material reviewed by such expert or 

consultant for a period of one year after the issuance of a final, non-appealable 

decision resolving all issues in the case. This shall not preclude such experts or 

consultants from consulting in future litigation, so long as such consulting does 

not involve software development work directly or indirectly intended for 

commercial purposes relating to any functionality covered by the Source Code 

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Material reviewed by such expert or consultant. 

11. Absent written consent from the Producing Party, any Outside Counsel, or any 

other person who actually reviews, obtains, has access to or otherwise learns of the Producing 

Party’s RESTRICTED -- ATTORNEYS’ EYES ONLY or RESTRICTED - SOURCE CODE

material, shall not be involved directly or indirectly (including communicating or advising) in the 

prosecution of patents or patent applications relating to technologies disclosed and/or claimed in 

U.S. Patent Nos. 7,949,752, RE42,726, RE43,051, RE44,686, and/or RE44,818 or the field of 

virtualization and virtual machines before any foreign or domestic agency, including the United 

States Patent and Trademark Office on behalf of a patentee. The purpose of this prosecution bar is 

to prohibit and prevent any person affiliated with a receiving Party from using designated 

RESTRICTED -- ATTORNEYS’ EYES ONLY or RESTRICTED - SOURCE CODE

material of a Producing Party to influence the drafting or amendment of the claims of any existing 

or future patent so that the patents read on the Producing Party’s past, present, or future products. 

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 or 

defending a patent before a domestic or foreign agency (including, but not limited to, a reissue 

protest, ex parte reexamination or inter partes reexamination), except that if the party defending a 

patent before a domestic or foreign agency intends to amend any claims, or draft new claims, an 

attorney who has received RESTRICTED ATTORNEYS’ EYES ONLY or RESTRICTED - 

SOURCE CODE material cannot participate—directly or indirectly—in seeking the amendment 

of any claims or the addition of any new claims. To minimize the risk of inadvertent disclosure, 

any party defending a patent before a domestic or foreign agency, as stated in the preceding 

sentence, that intends to seek claims amendments or new claims must erect an ethical wall between 

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the attorney(s) who received RESTRICTED ATTORNEYS’ EYES ONLY or RESTRICTED - 

SOURCE CODE material and the attorney(s) who are involved in seeking to amend the claims or 

prepare new claims in the proceeding. This Prosecution Bar shall begin when access to designated 

RESTRICTED -- ATTORNEYS’ EYES ONLY or RESTRICTED - SOURCE CODE

material is first received by the affected individual and shall end one (1) year after final termination 

of this action. 

12. Nothing in this Order shall require production of documents, information or other 

material that a Party contends is protected from disclosure by the attorney-client privilege, the 

work product doctrine, or other privilege, doctrine, or immunity. If documents, information or 

other material subject to a claim of attorney-client privilege, work product doctrine, or other 

privilege, doctrine, or immunity is inadvertently or unintentionally produced, such production shall 

in no way prejudice or otherwise constitute a waiver of, or estoppel as to, any such privilege, 

doctrine, or immunity. Any Party that inadvertently or unintentionally produces documents, 

information or other material it reasonably believes are protected under the attorney-client 

privilege, work product doctrine, or other privilege, doctrine, or immunity may obtain the return 

of such documents, information or other material by promptly notifying the recipient(s) and 

providing a privilege log for the inadvertently or unintentionally produced documents, information 

or other material. The recipient(s) shall gather and return all copies of such documents, information 

or other material to the producing Party no later than five (5) business days after receiving a request 

for their return, except for any pages containing privileged or otherwise protected markings by the 

recipient(s), which pages shall instead be destroyed and certified as such to the producing Party. 

13. There shall be no disclosure of any Designated Material by any person authorized 

to have access thereto to any person who is not authorized for such access under this Order. The 

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Parties are hereby ORDERED to safeguard all such documents, information and material to protect 

against disclosure to any unauthorized persons or entities. 

14. Nothing contained herein shall be construed to prejudice any Party’s right to use 

any Designated Material in taking testimony at any deposition or hearing provided that the 

Designated Material is only disclosed to a person(s) who is: (i) eligible to have access to the 

Designated Material by virtue of his or her employment with the designating party, (ii) identified 

in the Designated Material as an author, addressee, or copy recipient of such information, (iii) 

although not identified as an author, addressee, or copy recipient of such Designated Material, has, 

in the ordinary course of business, seen such Designated Material, (iv) counsel for a Party, 

including outside counsel and in-house counsel (subject to paragraphs 5 and 9 of this Order); (v) 

an independent contractor, consultant, and/or expert retained for the purpose of this litigation 

(subject to paragraphs 5 and 9 of this Order); (vi) court reporters and videographers; (vii) the Court; 

or (viii) other persons entitled hereunder to access to Designated Material. Designated Material 

shall not be disclosed to any other persons unless prior authorization is obtained from counsel 

representing the producing Party or from the Court. 

15. Parties may, at the deposition or hearing or within thirty (30) days after receipt of 

a deposition or hearing transcript, designate the deposition or hearing transcript or any portion 

thereof as “CONFIDENTIAL,” “RESTRICTED - ATTORNEY’ EYES ONLY,” or 

“RESTRICTED - SOURCE CODE” pursuant to this Order. Access to the deposition or hearing 

transcript so designated shall be limited in accordance with the terms of this Order. Until expiration 

of the 30-day period, the entire deposition or hearing transcript shall be treated as “RESTRICTED 

– ATTORNEYS’ EYES ONLY.” 

16. No party may remove, or cause to be removed, Designated Material (whether in 

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physical, electronic, or other form) produced by another Party from the territorial boundaries of 

the United States of America. Notwithstanding this prohibition, Designated Material may be taken 

outside the territorial limits of the United States if it is reasonably necessary for a deposition in 

this litigation taken in a foreign country. 

17. Any Designated Material that is filed with the Court shall be filed under seal and 

shall remain under seal until further order of the Court. The filing party shall be responsible for 

informing the Clerk of the Court that the filing should be sealed and for placing the legend “FILED 

UNDER SEAL PURSUANT TO PROTECTIVE ORDER” above the caption and 

conspicuously on each page of the filing. Exhibits to a filing shall conform to the labeling 

requirements set forth in this Order. If a pretrial pleading filed with the Court, or an exhibit thereto, 

discloses or relies on confidential documents, information or material, such confidential portions 

shall be redacted to the extent necessary and the pleading or exhibit filed publicly with the Court. 

18. The Order applies to pretrial discovery. Nothing in this Order shall be deemed to 

prevent the Parties from introducing any Designated Material into evidence at the trial of this 

Action, or from using any information contained in Designated Material at the trial of this Action, 

subject to any pretrial order issued by this Court. 

19. A Party may request in writing to the other Party that the designation given to any 

Designated Material be modified or withdrawn. The Party must identify the Designated Material 

it contends needs modification or withdrawal in a specific manner, such as by Bates number. If 

the designating Party does not agree to re-designation within four (4) business days of receipt of 

the written request, the requesting Party may apply to the Court for relief. Pending the Court’s 

determination of the application, the designation of the designating Party shall be maintained. 

20. Each outside consultant or expert to whom Designated Material is disclosed in 

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accordance with the terms of this Order shall be advised by counsel of the terms of this Order, 

shall be informed that he or she is subject to the terms and conditions of this Order, and shall sign 

an acknowledgment that he or she has received a copy of, has read, and has agreed to be bound by 

this Order. A copy of the acknowledgment form is attached as Appendix A. 

21. To the extent that any discovery is taken of persons who are not Parties to this 

Action (“Third Parties”) and in the event that such Third Parties contend that the discovery sought 

involves trade secrets, confidential business information, or other proprietary information, then 

such Third Parties may agree to be bound by this Order. 

22. To the extent that discovery or testimony is taken of Third Parties, the Third Parties 

may designate as “CONFIDENTIAL” or “RESTRICTED - ATTORNEYS’ EYES ONLY” any 

documents, information or other material, in whole or in part, produced or given by such Third 

Parties. The Third Parties shall have five (5) business days after production of such documents, 

information or other materials to make such a designation. Until that time period lapses or until 

such a designation has been made, whichever occurs sooner, all documents, information or other 

material so produced or given shall be treated as “CONFIDENTIAL” in accordance with this 

Order. 

23. Within sixty (60) days of final termination of this Action, including any appeals, 

all Designated Material, including all copies, duplicates, abstracts, indexes, summaries, 

descriptions, and excerpts or extracts thereof (excluding excerpts or extracts incorporated into any 

privileged memoranda of the Parties and materials which have been admitted into evidence in this 

Action), shall at the producing Party’s election either be returned to the producing Party or be 

destroyed. The receiving Party shall verify the return or destruction by affidavit furnished to the 

producing Party, upon the producing Party’s request. Notwithstanding this provision, Counsel are 

entitled to retain an archival copy of all pleadings, motion papers, trial, deposition, and hearing 

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transcripts, legal memoranda, correspondence, deposition and trial exhibits, expert reports, attorney 

work product, and consultant and Expert work product, even if such materials contain Protected 

Material. Any such archival copies that contain or constitute Protected Material remain subject to this 

Protective Order.

24. The failure to designate documents, information or material in accordance with this 

Order and the failure to object to a designation at a given time shall not preclude the filing of a 

motion at a later date seeking to impose such designation or challenging the propriety thereof. The 

entry of this Order and/or the production of documents, information and material hereunder shall 

in no way constitute a waiver of any objection to the furnishing thereof, all such objections being 

hereby preserved. 

25. Any Party knowing or believing that any other party is in violation of or intends to 

violate this Order and has raised the question of violation or potential violation with the opposing 

party and has been unable to resolve the matter by agreement may move the Court for such relief 

as may be appropriate in the circumstances. Pending disposition of the motion by the Court, the 

Party alleged to be in violation of or intending to violate this Order shall discontinue the 

performance of and/or shall not undertake the further performance of any action alleged to 

constitute a violation of this Order. 

26. Production of Designated Material by each of the Parties shall not be deemed a 

publication of the documents, information and material (or the contents thereof) produced so as to 

void or make voidable whatever claim the Parties may have as to the proprietary and confidential 

nature of the documents, information or other material or its contents. 

27. Nothing in this Order shall be construed to effect an abrogation, waiver or limitation 

of any kind on the rights of each of the Parties to assert any applicable discovery or trial privilege. 

28. If at any time Designated Material in any form is subpoenaed by any court, arbitral, 

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administrative or legislative body, or are otherwise requested in discovery, the person or entity to 

whom the subpoena or other request is directed shall immediately (a) notify in writing the person 

or entity who caused the subpoena or other request to issue that some or all of the material covered 

by the subpoena or request is subject to a Protective Order and include a copy of this Order with 

such notice, (b) give written notice thereof to every Party or nonparty, and their counsel, who has 

produced such documents and include a copy of the subpoena or request with such notice, and (c) 

provide each such producing Party or nonparty with an opportunity to object to the production of 

such documents. The person or entity to whom the subpoena or other request is directed shall not 

take any position concerning the propriety of such request or subpoena or the discoverability of 

the information sought thereby that is adverse to any producing Party or producing nonparty 

opposing the request for production of such documents or materials. If a producing Party or 

nonparty does not take steps to prevent disclosure of such documents within ten business days of 

the date written notice is given, the Party to whom the referenced subpoena is directed may produce 

such documents in response thereto, but shall take all reasonable measures to have such documents 

treated in accordance with terms of this Protective Order. 

29. In accordance with Federal Rule of Civil Procedure 26(b), communications and 

exchanges between counsel and experts (including testifying experts), including those made in 

preparing drafts of expert reports and declarations, notes, outlines, or any other writings leading 

up to an issued report(s) in this litigation, are not discoverable unless the expert relies on any such 

communication to support his or her opinion. In addition, draft expert reports and declarations are 

not discoverable, and all communications between counsel for a Party and that Party’s expert(s) 

related to this case or the content of expert reports are exempt from discovery, provided that this 

limitation on discovery does not permit a Party to withhold any material relied upon by testifying 

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experts solely on the ground that such material was provided to the expert by counsel. All materials 

generated by an expert with respect to that person’s work are also exempt from discovery unless 

they identify facts, data or assumptions relied upon by the expert in forming any opinions in this 

litigation and such information is not already disclosed in the expert’s report. Neither Party shall 

seek non-discoverable expert communications, exchanges, notes, or draft reports or declarations. 

30. The United States District Court for the Western District of Texas is responsible 

for the interpretation and enforcement of this Protective Order. After termination of this litigation, 

the provisions of this Protective Order shall continue to be binding except with respect to those 

documents and information that become a matter of public record. This Court retains and shall 

have continuing jurisdiction over the Parties and recipients of the Designated Material for 

enforcement of the provisions of this Protective Order following termination of this litigation. In 

the event anyone shall violate or threaten to violate the terms of this Protective Order, the aggrieved 

designating Party may immediately apply to obtain injunctive relief against any such person 

violating or threatening to violate any of the terms of this Protective Order. 

31. Nothing in this Protective Order shall preclude or impede outside litigation counsel 

of record’s ability to communicate with or advise their client in connection with this litigation only 

based on such counsel’s review and evaluation of Designated Material, provided however, that 

such communications or advice shall not disclose or reveal the substance or content of any 

Designated Material other than as permitted under this Protective Order. 

32. Each of the Parties shall also retain the right to file a motion with the Court (a) to 

modify this Order to allow disclosure of Designated Material to additional persons or entities if 

reasonably necessary to prepare and present this Action and (b) to apply for additional protection 

of Designated Material. 

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SIGNED this ________ day of _____________________, 2020. 

____________________________________ 

ALAN D. ALBRIGHT 

UNITED STATES DISTRICT JUDGE 

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1 

IN THE UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS

AUSTIN DIVISION

Intellectual Ventures II LLC, 

Plaintiff/CounterDefendants, 

v. 

VMware, Inc., 

Defendant/Counter-Plaintiff. 

Civil Action No. 1:19-cv-00475-ADA 

JURY TRIAL DEMANDED 

APPENDIX A 

UNDERTAKING OF EXPERTS OR CONSULTANTS REGARDING PROTECTIVE 

ORDER 

I, , declare that: 

1. My address is . 

My current employer is . 

My current occupation is . 

2. I have received a copy of the Protective Order in this action. I have carefully read and 

understand the provisions of the Protective Order. 

3. I will comply with all of the provisions of the Protective Order. I will hold in confidence, 

will not disclose to anyone not qualified under the Protective Order, and will use only for 

purposes of this action any information designated as “CONFIDENTIAL,” 

“RESTRICTED - ATTORNEYS’ EYES ONLY,” or “RESTRICTED - SOURCE 

CODE” that is disclosed to me. 

4. Promptly upon termination of these actions, I will return all documents and things 

designated as “CONFIDENTIAL,” “RESTRICTED - ATTORNEYS’ EYES ONLY,” 

Case 1:20-cv-00457-ADA Document 35 Filed 07/03/20 Page 19 of 20
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or “RESTRICTED - SOURCE CODE” that came into my possession, and all 

documents and things that I have prepared relating thereto, to the outside counsel for the 

party by whom I am employed. 

5. I hereby submit to the jurisdiction of this Court for the purpose of enforcement of the 

Protective Order in this action. 

I declare under penalty of perjury that the foregoing is true and correct. 

Signature 

Date ____________________________________________ 

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