Paul A. C. Berg, OSB No. 062738 

Email: pberg@cosgravelaw.com 

COSGRAVE VERGEER KESTER LLP 

888 SW Fifth Avenue, Suite 500 

Portland, Oregon 97204 

Telephone: (503) 323-9000 

Facsimile: (503) 323-9019 

Attorneys for Plaintiff 

UNITED STATES DISTRICT COURT 

DISTRICT OF OREGON 

PORTLAND DIVISION 

ST. JUDE MEDICAL S.C., INC., 

Plaintiff, 

V. 

case'~~- -MC- 9 9 

PLAINTIFF'S MOTION TO FILE 

DOCUMENTS UNDER SEAL 

LOUISE MARIE JANSSEN-COUNOTTE, 

Principal case pending in Western District of 

Texas, Case No.: 1 :14-cv-00877-SS 

Defendant. 

I. MOTION 

Pursuant to LR 3.7(c) and 3.8(b), plaintiff St. Jude Medical S.C., Inc. (St. Jude) 

moves to file under seal its motion to compel Biotronik, Inc. (Biotronik) to comply with 

third-party subpoena (the motion) and exhibits L and M to the motion. 

II. DISCUSSION 

St. Jude is currently prosecuting civil claims against Louise Marie "Marlou" 

Janssen-Counotte (Ms. Janssen) relating to Ms. Janssen's misappropriation of St. 

Jude's trade secrets. That action (the underlying action) is pending in the Western 

District of Texas. 

St. Jude served a subpoena on Ms. Janssen's current employer Biotronik, Inc. 

(Biotronik). A dispute has arisen between Biotronik and St. Jude regarding Biotronik's 

Page 1 - PLAINTIFF'S MOTION TO FILE DOCUMENTS UNDER SEAL 

Cosgrave Vergeer Kester LLP 

Attorneys 

888 SW Fifth Avenue, Suite 500 

Portland, Oregon 97204 

Telephone: (503) 323-9000 Facsimile: (503) 323-9019 

2248864 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 1 of 13
response to that subpoena. St. Jude is filing the motion in an effort to obtain Biotronik's 

compliance with the subpoena. 

A protective order was entered in the underlying action by the Honorable US 

District Court Judge Sam Sparks. A copy of that protective order is attached as Exhibit 

A to this motion. Pursuant to the terms of the protective order, parties may classify 

certain information confidential or attorney eyes only. Classified information that is to be 

included in briefing, or in exhibits to briefing, must be filed under seal. Ex. A, §§ 12, 13. 

Consistent with the protective order, Exhibit L (Ms. Janssen's deposition 

transcript) has been designated as Confidential, and Exhibit M (Ms. Janssen's 

employment contract with Biotronik) has been designated as Attorney Eyes Only. And, 

portions of those two exhibits are quoted on several occasions in the motion because 

they contain highly relevant and important information. 

For the reasons stated above, St. Jude respectfully requests that the court allow 

the motion, and Exhibits Land M to be filed under seal. 

DATED: February 20, 2015 

COSGRAVE VERGEER KESTER LLP 

Paul A. C. Berg, OSB No. 062738 

Telephone: 503-323-9000 

Fax: 503-323-9019 

E-mail: pberg@cosgravelaw.com 

Attorneys for Plaintiff 

Page 2 - PLAINTIFF'S MOTION TO FILE DOCUMENTS UNDER SEAL 

Cosgrave Vergeer Kester LLP 

Attorneys 

888 SW Fifth Avenue, Suite 500 

Portland, Oregon 97204 

Telephone: (503) 323-9000 Facsimile: (503) 323-9019 

2248864 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 2 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 

IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

AUSTIN DIVISION 

Page 1 of 9 

Filod Cf/2~/!f 

S>; 

C:crk, U. S. CYc<'. ::t Court 

w· Dist:i:;t of Texas 

~_. ____________ __ Di1puty 

ST. JUDE MEDICAL S.C., INC., § 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

Plaintiff 

v. CIVIL ACTION NO. 14-cv-877 ss 

LOUISE MARIE JANSSEN-COUNOTTE 

Defendant 

CONFIDENTIALITY AND PROTECTIVE ORDER 

Before the court is the motion of Plaintiff St. Jude Medical S.C., Inc. for the entry of a 

confidentiality and protective order ("Protective Order"). After careful consideration, it is 

hereby ORDERED as follows: 

1. Classified Information 

"Classified Information" means any information of any type, kind, or character that is 

designated as "Confidential", "For Counsel Only", or "Attorneys Eyes Only" by any of the 

supplying or receiving persons, whether it be a document, information contained in a document, 

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

otherwise. 

2. Qualified Persons 

"Qualified Persons" means: 

a. For Counsel or Attorneys Only information: 

1. retained counsel for the parties in this litigation and their respective staff; 

11. actual or potential independent experts or consultants (and their 

administrative or clerical staff) engaged in connection with this litigation 

(which shall not include the current employees, officers, members, or 

agents of parties or affiliates of parties) who, prior to any disclosure of 

Classified Information to such person, have signed a document agreeing to 

be bound by the terms of this Protective Order (such signed document to 

be maintained by the attorney retaining such person) and have been 

[ 1 ] 

EXHIBIT A 

PAGE 1 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 3 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 Page 2 of 9 

designated in writing by notice to all counsel; 

iii. this court and its staff and any other tribunal or dispute resolution officer 

duly appointed or assigned in connection with this litigation. 

b. For Confidential information: 

1. the persons identified in subparagraph 2(a); 

11. the party, if a natural person; 

111. if the party is an entity, such officers or employees of the party who are 

actively involved in the prosecution or defense of this case who, prior to 

any disclosure of Confidential information to such person, have been 

designated in writing by notice to all counsel and have signed a document 

agreeing to be bound by the terms of this Protective Order (such signed 

document to be maintained by the attorney designating such person); 

1v. litigation vendors, court reporters, and other litigation support personnel; 

v. any person who was an author, addressee, or intended or authorized 

recipient of the Confidential inforrriation and who agrees to keep the 

information confidential, provided that such persons may see and use the 

Confidential information but not retain a copy. 

c. Such other person as this court may designate after notice and an opportunity to 

be heard. 

3. Designation Criteria 

a. Nonclassified Information. Classified Information shall not include information 

that either: 

1. is in the public domain at the time of disclosure, as evidenced by a written 

document; 

11. becomes part of the public domain through no fault of the recipient, as 

evidenced by a written document; 

111. the receiving party can show by written document was in its rightful and 

lawful possession at the time of disclosure; or 

IV. lawfully comes into the recipient's possession subsequent to the time of 

disclosure from another source without restriction as to disclosure, 

provided such third party has the right to make the disclosure to the 

receiving party. 

b. Classified Information. A party shall designate as Classified Information only 

[ 2] 

EXHIBIT A 

PAGE 2 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 4 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 Page 3 of 9 

such information that the party in good faith believes in fact is confidential. Information that is 

generally available to the public, such as public filings, catalogues, advertising materials, and the 

like, shall not be designated as Classified. 

Information and documents that may be designated as Classified Information include, but 

are not limited to, trade secrets, confidential or proprietary financial information, operational 

data, business plans, and competitive analyses, personnel files, personal information that is 

protected by law, and other sensitive information that, if not restricted as set forth in this order, 

may subject the producing or disclosing person to competitive or financial injury or potential 

legal liability to third parties. 

Correspondence and other communications between the parties or with nonparties may 

be designated as Classified Information if the communication was made with the understanding 

or reasonable expectation that the information would not become generally available to the 

public. 

c. For Counsel or Attorneys Only. The designation "For Counsel Only" or 

"Attorneys Eyes Only" shall be reserved for information that is believed to be unknown to the 

opposing party or parties, or any of the employees of a corporate party. For purposes of this 

order, so-designated information includes, but is not limited to, product formula information, 

design information, non-public financial information, pricing information, customer identification 

data, and certain study methodologies. 

d. Ultrasensitive Information. At this point, the parties do not anticipate the need for 

higher levels of confidentiality as to ultrasensitive documents or information. However, in the 

event that a court orders that ultrasensitive documents or information be produced, the parties 

will negotiate and ask the court to enter an ultrasensitive information protocol in advance of 

production to further protect such information. 

4. Use of Classified Information 

All Classified Information provided by any party or nonparty m the course of this 

[ 3] 

EXHIBIT A 

PAGE 3 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 5 of 13
Case 1:14-cv-00877 -ss Document 23 Filed 09/24/14 Page 4 of 9 

litigation shall be used solely for the purpose of preparation, trial, and appeal of this litigation 

and for no other purpose, and shall not be disclosed except in accordance with the terms hereof. 

5. Marking of Documents 

Documents provided in this litigation may be designated by the producing person or by 

any party as Classified Information by marking each page of the documents so designated with a 

stamp indicating that the information is "Confidential", "For Counsel Only", or "Attorneys Eyes 

Only". In lieu of marking the original of a document, if the original is not provided, the 

designating party may mark the copies that are provided. Originals shall be preserved for 

inspection. 

6. Disclosure at Depositions 

Information disclosed at (a) the deposition of a party or one of its present or former 

officers, directors, employees, agents, consultants, representatives, or independent experts 

retained by counsel for the purpose of this litigation, or (b) the deposition of a nonparty may be 

designated by any party as Classified Information by indicating on the record at the deposition 

that the testimony is "Confidential" or "For Counsel Only" and is subject to the provisions of this 

Order. 

Any party also may designate information disclosed at a deposition as Classified 

Information by notifying all parties in writing not later than 30 days of receipt of the transcript of 

the specific pages and lines of the transcript that should be treated as Classified Information 

thereafter. Each party shall attach a copy of each such written notice to the face of the transcript 

and each copy thereof in that party's possession, custody, or control. All deposition transcripts 

shall be treated as For Counsel Only for a period of30 days after initial receipt of the transcript. 

To the extent possible, the court reporter shall segregate into separate transcripts 

information designated as Classified Information with blank, consecutively numbered pages 

being provided in a nondesignated main transcript. The separate transcript containing Classified 

Information shall have page numbers that correspond to the blank pages in the main transcript. 

Counsel for a party or a nonparty witness shall have the right to exclude from depositions 

[4) 

EXHIBIT A 

PAGE 4 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 6 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 Page 5 of 9 

any person who is not authorized to receive Classified Information pursuant to this Protective 

Order, but such right of exclusion shall be applicable only during periods of examination or 

testimony during which Classified Information is being used or discussed. 

7. Disclosure to Qualified Persons 

a. To Whom. Classified Information shall not be disclosed or made available by the 

receiving party to persons other than Qualified Persons except as necessary to comply with 

applicable law or the valid order of a court of competent jurisdiction; provided, however, that in 

the event of a disclosure compelled by law or court order, the receiving party will so notify the 

producing party as promptly as practicable (if at all possible, prior to making such disclosure) 

and shall seek a protective order or confidential treatment of such information. Information 

designated as For Counsel Only shall be restricted in circulation to Qualified Persons described 

in subparagraph 2(a). 

b. Retention of Copies During this Litigation. Copies of For Counsel Only 

information shall be maintained only in the offices of outside counsel for the receiving party and, 

to the extent supplied to experts described in subparagraph 2(a)(ii), in the offices of those 

experts. Any documents produced in this litigation, regardless of classification, that are provided 

to Qualified Persons shall be maintained only at the office of such Qualified Person and only 

necessary working copies of any such documents shall be made. Copies of documents and 

exhibits containing Classified Information may be prepared by independent copy services, 

printers, or illustrators for the purpose of this litigation. 

c. Each party's outside counsel shall maintain a log of all copies of For Counsel Only 

documents that are delivered to Qualified Persons. 

8. Unintentional Disclosures 

Documents unintentionally produced without designation as Classified Information later 

may be designated and shall be treated as Classified Information from the date written notice of 

the designation is provided to the receiving party. 

If a receiving party learns of any unauthorized disclosure of Confidential information or 

[ 5] 

EXHIBIT A 

PAGE 5 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 7 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 Page 6 of 9 

For Counsel Only information, the party shall immediately upon learning of such disclosure 

inform the producing party of all pertinent facts relating to such disclosure and shall make all 

reasonable efforts to prevent disclosure by each unauthorized person who received such 

information. 

9. Documents Produced for Inspection Prior to Designation 

In the event documents are produced for inspection prior to designation, the documents 

shall be treated as For Counsel Only during inspection. At the time of copying for the receiving 

parties, Classified Information shall be marked prominently "Confidential", "For Counsel Only", 

or "Attorneys Eyes Only" by the producing party. 

10. Consent to Disclosure and Use in Examination 

Nothing in this order shall prevent disclosure beyond the terms of this order if each party 

designating the information as Classified Information consents to such disclosure or if the court, 

after notice to all affected parties and nonparties, orders such disclosure. Nor shall anything in 

this order prevent any counsel of record from utilizing Classified Information in the examination 

or cross-examination of any person who is indicated on the document as being an author, source, 

or recipient of the Classified Information, irrespective of which party produced such information. 

11. Challenging the Designation 

a. Classified Information. A party shall not be obligated to challenge the propriety 

of a designation of Classified Information at the time such designation is made, and a failure to 

do so shall not preclude a subsequent challenge to the designation. In the event that any party to 

this litigation disagrees at any stage of these proceedings with the designation of any information 

as Classified Information, the parties shall first try to resolve the dispute in good faith on an 

informal basis, such as by production of redacted copies. If the dispute cannot be resolved, the 

objecting party may invoke this Protective Order by objecting in writing to the party who 

designated the document or information as Classified Information. The designating party shall 

then have 14 days to move the court for an order preserving the designated status of the disputed 

information. The disputed information shall remain Classified Information unless and until the 

[ 6] 

EXHIBIT A 

PAGE 6 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 8 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 Page 7 of 9 

court orders otherwise. Failure to move for an order shall constitute a termination of the status of 

such item as Classified Information. 

b. Qualified Persons. In the event that any party in good faith disagrees with the 

designation of a person as a Qualified Person or the disclosure of particular Classified 

Information to such person, the parties shall first try to resolve the dispute in good faith on an 

informal basis. If the dispute cannot be resolved, the objecting party shall have 14 days from the 

date of the designation or, in the event particular Classified Information is requested subsequent 

to the designation of the Qualified Person, 14 days from service of the request to move the court 

for an order denying the disposed person (a) status as a Qualified Person, or (b) access to 

particular Classified Information. The objecting person shall have the burden of demonstrating 

that disclosure to the disputed person would expose the objecting party to the risk of serious 

harm. Upon the timely filing of such a motion, no disclosure of Classified Information shall be 

made to the disputed person unless and until the court enters an order preserving the designation. 

12. Manner of Use in Proceedings 

In the event a party wishes to use any Classified Information in affidavits, declarations, 

briefs, memoranda of law, or other papers filed in this litigation, the party shall do one of the 

following: (l) with the consent of the producing party, file only a redacted copy of the 

information; (2) where appropriate (e.g., in connection with discovery and evidentiary motions) 

provide the information solely for in camera review; or (3) file such information under seal with 

the court consistent with the sealing requirements ofthe court. 

13. Filing Under Seal 

The clerk of this court is directed to maintain under seal all documents, transcripts of 

deposition testimony, answers to interrogatories, admissions, and other papers filed under seal in 

this litigation that have been designated, in whole or in part, as Classified Information by any 

party to this litigation consistent with the sealing requirements of the court. 

14. Return of Documents 

Not later than 120 days after conclusion of this litigation and any appeal related to it, any 

[ 7] 

EXHIBIT A 

PAGE 7 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 9 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 Page 8 of 9 

Classified Information, all reproductions of such information, and any notes, summaries, or 

descriptions of such information in the possession of any of the persons specified in paragraph 2 

(except subparagraph 2(a)(iii)) shall be returned to the producing party or destroyed, except as 

this court may otherwise order or to the extent such information has been used as evidence at any 

trial or hearing. Notwithstanding this obligation to return or destroy information, counsel may 

retain attorney work product, including document indices, so long as that work product does not 

duplicate verbatim substantial portions of the text of any Classified Information. 

15. Ongoing Obligations 

Insofar as the provisions of this Protective Order, or any other protective orders entered 

in this litigation, restrict the communication and use of the information protected by it, such 

provisions shall continue to be binding after the conclusion of this litigation, except that (a) there 

shall be no restriction on documents that are used as exhibits in open court unless such exhibits 

were filed under seal, and (b) a party may seek the written permission of the producing party or 

order of the court with respect to dissolution or modification of this, or any other, protective 

order. 

16. Advice to Clients 

This order shall not bar any attorney in the course of rendering advice to such attorney's 

client with respect to this litigation from conveying to any party client the attorney's evaluation 

in a general way of Classified Information produced or exchanged under the terms of this order; 

provided, however, that in rendering such advice and otherwise communicating with the client, 

the attorney shall not disclose the specific contents of any Classified Information produced by 

another party if such disclosure would be contrary to the terms of this Protective Order. 

17. Duty to Ensure Compliance 

Any party designating any person as a Qualified Person shall have the duty to reasonably 

ensure that such person observes the terms of this Protective Order and shall be responsible upon 

breach of such duty for the failure of such person to observe the terms of this Protective Order. 

[8] 

EXHIBIT A 

PAGE 8 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 10 of 13
Case 1:14-cv-00877-SS Document 23 Filed 09/24/14 Page 9 of 9 

18. Waiver 

Pursuant to Federal Rule of Evidence 502, neither the attorney-client privilege nor work 

product protection is waived by disclosure connected with this litigation. 

19. Modification and Exceptions 

The parties may, by stipulation, provide for exceptions to this order and any party may 

seek an order of this court modifying this Protective Order. 

It is SO ORDERED this ~ t.f L day of ~ 

[9] 

'20 J ¥- . 

EXHIBIT A 

PAGE 9 OF 9 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 11 of 13
CERTIFICATE OF SERVICE 

I hereby certify that I served a true and correct copy of the foregoing 

PLAINTIFF'S MOTION TO FILE DOCUMENTS UNDER SEAL on the date indicated 

below by: 

[gl mail with postage prepaid, deposited in the US mail at Portland, Oregon, 

D hand delivery, 

D facsimile transmission, 

D overnight delivery, 

[?SI email, 

D electronic filing notification. 

I further certify that said copy was placed in a sealed envelope delivered as 

indicated above and addressed to said attorneys at the addresses listed below: 

M. Scott lncerto 

James I. Hughes 

NORTON ROSE FULBRIGHT US LLP 

98 San Jacinto Boulevard, Suite 1100 

Austin, TX 78701-4255 

Of Attorneys for Plaintiff 

Layne E. Kruse 

Darryl W. Anderson 

NORTON ROSE FULBRIGHT US LLP 

1301 McKinney, Suite 5100 

Houston, TX 77010-3095 

Of Attorneys for Plaintiff 

Stephen M. Nickelsburg 

Roni Bergoffen 

CLIFFORD CHANCE US LLP 

2001 K Street NW 

Washington, DC 20006-1001 

Of Attorneys for Plaintiff 

IIIII/ 

IIIII/ 

Page 1 - CERTIFICATE OF SERVICE 

Cosgrave Vergeer Kester LLP 

Attorneys 

888 SW Fjfth Avenue, Suite 500 

Portland, Oregon 97204 

Telephone: (503) 323-9000 Facsimile: (503) 323-9019 

2248864 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 12 of 13
Mark A. Mayfield 

Mark T. Mitchell 

Frederick W. Sultan, IV 

GARDERE WYNNE SEWELL LLP 

600 Congress Avenue, Suite 3000 

Austin, TX 78701 

Of Attorneys for Defendant 

Sean Donahue 

DONAHUE & ASSOCIATES 

1625 Umpqua Bank Plaza 

One SW Columbia Street 

Portland, OR 97258-2021 

Of Attorneys for Biotronik, Inc. 

DATED: February 20, 2015 

Page 1 - CERTIFICATE OF SERVICE 

Cosgrave Vergeer Kester LLP 

Attorneys 

888 SW Fifth Avenue, Suite 500 

Portland, Oregon 97204 

Telephone: (503) 323-9000 Facsimile: (503) 323-9019 

2248864 

Case 3:15-mc-00099-SI Document 3 Filed 02/20/15 Page 13 of 13