Académique Documents
Professionnel Documents
Culture Documents
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Plaintiffs,
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vs.
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Defendants.
No. 14C20043
The Honorable Courtland Geyer
PLAINTIFFS MOTION TO
REMOVE CONFIDENTIAL
AND ATTORNEYS EYES
ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE
AMENDED PROTECTIVE
ORDER
ORCP 36 C
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TABLE OF CONTENTS
MOTIONS ................................................................................................................................ 1
INTRODUCTION .................................................................................................................... 1
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Oracle cloaks in secrecy documents that contradict its position and show
that Oracle was at fault. ................................................................................................ 2
II.
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I.
II.
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ARGUMENT .......................................................................................................................... 10
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I.
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B.
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D.
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A.
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II.
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B.
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D.
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Oracle cannot meet its burden to show good cause to maintain the
confidential or AEO designations on the Deposition
Documents under the two-prong test. ............................................................. 20
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E.
CONCLUSION ....................................................................................................................... 24
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TABLE OF AUTHORITIES
Cases
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Koch v. Greenberg,
No 07 CIV 9600 BSJ DF, 2012 WL 1449186 (SDNY Apr 13, 2012) ..... 12, 16, 18, 20
Paradigm All., Inc. v. Celeritas Techs., LLC,
248 F.R.D. 598, 605 (D Kan 2008)............................................................................. 10
Parkway Gallery Furniture, Inc. v. Kittinger/Pennsylvania House Grp., Inc.,
121 FRD 264, 268 (MDNC 1988) .............................................................................. 17
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Statutes
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Rules
ORCP 36 C ............................................................................................................. 1, 10, 17, 18
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Counsel for plaintiffs Ellen Rosenblum, the Attorney General of Oregon, and the
State of Oregon, by and through Ellen Rosenblum, the Oregon Health Authority, the
Department of Human Services, and the Department of Consumer and Business Services,
(plaintiffs) certify that they made a good faith effort to resolve this dispute through
discussion with counsel for defendant Oracle America, Inc. (Oracle) but were unable to
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Plaintiffs request oral argument for this motion. The time estimated for argument is
60 minutes, and official court reporting services are requested.
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MOTIONS
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1.
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eyes only (AEO) designations from its document production and re-designate its
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documents in good faith according to the terms of the Courts September 30, 2015 Amended
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Protective Order and Oregon Rule of Civil Procedure 36 C within 30 days, and provide
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2.
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the 10 documents described in the declaration of Harry B. Wilson (Wilson Decl) and
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These motions are based upon the pleadings in this matter, the supporting
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Memorandum of Points and Authorities below, and the declarations of Harry B. Wilson and
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Greg Scott.
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INTRODUCTION
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public letter from its CEO excoriating Oregon officials, presented a slideshow to Congress
and made frequent statements to the press faulting Oregon for Oracles shoddy work and
broken software. Oracle even lobbied the Oregon legislature. In October 2014, Oracles
CEO, defendant Safra Catz, wrote a letter to Oregon legislative leaders suggesting that they
should pull funding for this litigation. Last month, an Oracle lobbyist repeated this message
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the press, and the Oregon legislature that the HIX Project was not a failure of technology
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and the HIX was fully functional by February 2014. (Ex 11 to Wilson Decl (11/20/2015
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Guest column by Oracle executive Ken Glueck); also Ex 12 to Wilson Decl) Oracle has
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further declared that the State should have hired a systems integrator to integrate Oracles
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products (even though Oracle had promised that its products were pre-integrated) and
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contends that the absence of a system integrator doomed the HIX failure. (Ex 12.)
Contrary to Oracles spin, Oracles documents demonstrate its own culpability, the
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shoddiness of its programming, its active opposition to Oregons hiring a systems integrator,
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and its misappropriation of Oregon and federal grant funding to develop code to sell to other
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customers. None of these documents satisfy the APO criteria for treatment as confidential
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or AEO. They contain organizational plans for the Projects and internal evaluations of
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Oracles work for plaintiffs, not protectable trade secrets and competitively sensitive
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information.
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A November 22, 2013 internal email from an Oracle developer stating that
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(Ex 1 to
Wilson Decl.)
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A March 16, 2012 email from Oracles Senior Practice Director for Oracle
Government and Health Care Consulting says:
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In the same March 16, 2012 email, the Senior Practice Director recommends
that
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(Id.)
Oracles analyses of the HIX Project and Oracles plans specific to the HIX Project are not
trade secrets and do not reveal competitively sensitive information. Instead, those documents
and many others like them belie Oracles public relations story, undermine its litigation
defenses, and strongly support plaintiffs claims. They are also crucial to preparing the
States witnesses for testimony, fully advising clients, and providing the Oregon legislature,
Congress, federal authorities, and Oregon citizens with a complete history of the Projects.
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II.
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Ordinarily, the State would be able to share these critical documents with the Oregon
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legislature, Congress, and federal authorities. As a general rule, the public is permitted
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Catholic Archbishop of Portland in Or., 661 F3d 417, 424 (9th Cir 2011) (quotation marks
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parties to designate documents containing private personal information, trade secrets, and
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only. The law requires Oracle to apply these designations in good faith and to use them
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only when public disclosure will work a clearly defined and serious injury. Citizens Util.
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Bd. of Or. v. Or. Pub. Util. Commn, 128 Or App 650, 658 (1994). But rather than obey the
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proscriptions of this Courts Amended Protective Order and Oregon law, Oracle applied
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documents it produced. (Declaration of Greg Scott (Scott Decl) 2, 4.) As one court put
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2014 WL 6886923, at *3 (D Colo Dec 5, 2014). Oracles abuse of the APO is further
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Decl.)
By misusing the APO, Oracle obstructs plaintiffs preparation of its case. Oracles
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abuse of the confidential and attorneys eyes only designations hampers plaintiffs
ability to file documents with the Court, prepare witnesses for depositions and trial, and
advise their clients on strategy and settlement. Furthermore, Oracles improper designations
conceal Oracles critical self-assessments and error reports and prevent the Oregon
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legislature, Congress, and federal authorities from receiving information about Oracles role
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in the failure of the HIX Project. A federal district court faced with a similar over-
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designation of documents condemned tactics like Oracles: Courts are too overburdened
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dilatory, and obstructionist litigation tactics, or similar stratagems designed to increase the
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litigation expenses of the opposing party. The risks for engaging in such conduct must be
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substantial in order to act as an effective deterrent. THK Am., Inc. v. NSK Co., 157 FRD
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The State and Cover Oregon spent more than $240 million in taxpayer money on the
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Modernization and HIX Projects. The Oregon legislature, Congress, federal authorities, and
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the public have a right to a full and complete understanding of the reasons why those Projects
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purpose of the trial process. Richmond Newspapers, Inc. v. Virginia, 448 US 555, 595
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obscuring incompetence, and concealing corruption. Brown & Williamson Tobacco Corp.
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v. F.T.C., 710 F2d 1165, 1179 (6th Cir 1983). Where, as here, a corporation has attempted to
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hide its malfeasance and incompetence, common sense tells us that the greater the
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motivation a corporation has to shield its operations, the greater the publics need to know.
Id. at 1180. The Court should order Oracle to remove its improper confidential and
AEO designations.
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FACTUAL BACKGROUND
The Amended Protective Order limits what can be designated confidential and
AEO to trade secrets and competitively sensitive information.
The APO permits the parties to designate documents and deposition testimony
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applicable law or regulation[.] (APO 2.) The AEO designation may be applied only to
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Litigation Material that contains information that is commercially sensitive, contains trade
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information, if reviewed by anyone other than attorneys, will significantly harm the
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formula, pattern, compilation, program, device, method, technique or process that: (a)
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Derives independent economic value, actual or potential, from not being generally known to
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the public or to other persons who can obtain economic value from its disclosure or use; and
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(b) Is the subject of efforts that are reasonable under the circumstances to maintain its
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essentially identical to trade secrets. See Take It Away, Inc. v. The Home Depot, Inc., No
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CIV.A 05-12484-DPW, 2009 WL 458552, at *7 (D Mass Feb 6, 2009) affd, 374 F Appx 47
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(1st Cir 2010) (trade secrets and confidential business information are essentially identical
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concepts).
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confidential and attorneys eyes only. The APO provides that Litigation Material
designated confidential and attorneys eyes only shall be used solely for the purposes of
this Action and the case State of Oregon, by and through the Oregon Health Authority, et al.
v. Oracle America, Inc., et al., Marion County Circuit Court Case No. 15 CV 03287 * * * ,
and shall not be used, made available, or disclosed for the purposes of any other litigation,
investigation, inquiry, judicial or administrative proceeding, dispute or case, or used for any
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for the parties, consultants and experts, counsel for insurers, witnesses and potential
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witnesses, and parties to the litigation. (APO 5-6.) AEO material may not be revealed to
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the parties to the litigation. Instead, AEO material is limited to the Court, counsel for the
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Party) must send a letter to the party that designated the Litigation Material (the
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Designating Party) requesting that the Designating Party remove the designations and
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identify[ing] the document(s) at issue and the reason for the request. (Id. 10.) The
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Designating Party must respond within 10 days by either removing the designations or
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stat[ing] the reasons for refusal. (Id.) If the Designating Party refuses to remove the
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designations, the Requesting Party may, after 14 days from the date of the refusal, file a
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motion for an order requiring the Designating Party to remove the confidential or AEO
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designations.
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II.
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November 24, 2015, plaintiffs asked Oracle to provide information indicating what
percentage of its documents it had designated confidential or AEO. (Id. 3.) Oracle did
production. (Id. 4.) Plaintiffs review team recorded the designation on each document:
210 documents were designated AEO (21%); 759 were designated confidential (76%);
only 31 had no designation (3%). Based on this random sample, plaintiffs estimate that 97%
Oracle also admits that it made a blanket designation of all its communications on the
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project. In a November 6, 2015 letter from Oracle to plaintiffs, Oracle indicated that it had
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designated all communications it exchanged with the State, Cover Oregon, and third parties
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p 2 (emphasis added).)
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On December 10, 2015, plaintiffs, as required by the APO, requested Oracle remove
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its improper confidential and AEO designations from its documents and deposition
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transcripts. (Ex 13 to Wilson Decl.) Plaintiffs also requested that Oracle immediately
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remove its improper confidential and AEO designations from 77 documents that
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plaintiffs have or intend to use during depositions. (Id.) Plaintiffs have selected ten of the 77
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documents to bring to the Courts attention in this motion (the Deposition Documents).1
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In a letter to plaintiffs on December 18, 2015, Oracle stated unequivocally: Oracle Will Not
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De-Designate The Deposition Exhibits. (Ex 14 to Wilson Decl, 12/18/2015 letter from
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Oracle (emphasis omitted).) Oracle further stated that the Deposition Documents
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specifically state the reasons for the refusal (APO 10) for the 77 documents, relying
instead on broad statements about all of the documents. (Id.) Later, during the parties
further conferral on this Motion, Oracle agreed to change the designations on two of the 10
Deposition Documents that are the subject of this Motion. Specifically, Oracle re-designated
the emails attached as Exhibits 1 and 6 to the Wilson Declaration from AEO to
confidential. Oracle refused to remove its confidential designations from these two
documents.
ARGUMENT
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Motion 1: The Court should order Oracle to remove its improper confidential
and AEO designations and re-designate its documents in good faith according
to the APO.
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Where a party does not apply confidential or AEO designations properly and in
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good faith, a court may order that party to re-designate its documents. Oracles designation
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did not comply with the APO. The Court should order Oracle to re-designate its documents
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in good faith.
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I.
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A.
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The APO requires the parties designate their documents in good faith. Paradigm All.,
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Inc. v. Celeritas Techs., LLC, 248 F.R.D. 598, 605 (D. Kan. 2008) (Implicit in the
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protective order and its provision for designating documents as confidential or AEO is a
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97% of its documents either confidential or AEO. (Scott Decl 4.) Indeed, Oracle
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admitted that it designated every single email exchanged between Oracle and the State that it
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Oregon courts look to federal case law for guidance on protective orders entered
under ORCP 36 C. Citizens Util. Bd. of Or. v. Or. Pub. Util. Commn, 128 Or App 650, 658
(1994) (relying on federal district court decision).
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demonstrates that Oracle did not designate its documents in good faith. In THK America,
Inc. v. NSK Co., 157 FRD 637, 645 & 647 (ND Ill 1993), the defendants designated at least
79% of their documents AEO. The court stated that this percentage was absurdly high
obstructionist. The court concluded that the defendants over-designations were the
product of bad faith and ordered the defendants to re-review and re-designate their entire
production. Id. at 647. It also forbade the defendants from marking any document AEO.
In another case, a court held that a party designated its documents in bad faith where it
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marked 90% of its documents AEO. Healthtrio, LLC v. Aetna, Inc., No 12-CV-03229-
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REB-MJW, 2014 WL 6886923, at *3 (D Colo Dec 5, 2014). The court stated that 90% is
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an absurd number even though this is a complex patent case going to the heart of
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Defendants business. Id. In In re ULLICO Inc. Litig., 237 FRD at 317, a party designated
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99% of documents confidential. The court concluded that the party grossly abused the
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include:
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ORACLE_STATE_00006269
(Ex 15 to Wilson Decl.);
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(Ex 16
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to Wilson Decl.);
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ORACLE_STATE_00998581
(Ex 17 to Wilson Decl.);
ORACLE_STATE_00455290
Wilson Decl.);
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(Ex 18 to
ORACLE_STATE_01666013
(Ex 19 to Wilson Decl.);
(Ex 20 to
Wilson Decl.);
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ORACLE_STATE_00997249
(Ex
22 to Wilson Decl.).
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Plaintiffs identified each of these documents to Oracle in their December 10, 2015 letter. (Ex
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13 to Wilson Decl.) In response, Oracles December 18, 2015 letter did not contest that the
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documents did not warrant confidential or AEO designations.3 (Ex 14 to Wilson Decl.)
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Nonetheless, Oracle did not agree to remove the improper designations or to examine the
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For two of these documents, Oracle contended that its improper confidential and
AEO designations are warranted because the documents are attached to other documents
that are confidential or AEO. (Ex 14 to Wilson Decl.) Documents must be designated
on a document-by-document basis. See Koch v. Greenberg, No 07 CIV 9600 BSJ DF, 2012
WL 1449186, at *5 (SDNY Apr 13, 2012) (requiring party to review all confidential
designations and make good faith revisions on a document-by-document basis).
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Indeed, Oracle even designated
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when they were created. Oracle, when defending its designation of a small sample of
documents, stated that a document was appropriately designated as Confidential under the
APO simply because Oracle has written the word confidential on the email when it sent it
in April 2014. (Id. at 3.) In other words, Oracle marked it confidential now without
actually determining if the document was confidential under the APO. Oracle cannot make
a document confidential simply by having called it confidential in the past. See Take it
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B.
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or AEO obstructs plaintiffs ability to prepare its case. The improper use of the
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these documents with the court, including * * * having to file all of these documents under
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seal. In re ULLICO Inc. Litig., 237 FRD at 318. Moreover, by over-designating its
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documents in bad faith, Oracle inequitably shifts the burden of reviewing those documents
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for protectable information from itself to plaintiffs, wasting plaintiffs time and resources.
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See Procaps S.A. v. Patheon Inc., No. 12-24356-CIV, 2015 WL 4430955, at *8 (S.D. Fla.
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July 20, 2015) (it is inequitable to shift the burden of reviewing documents to the party
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on plaintiffs because discovery, trial preparation, and trial are made more difficult and
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expensive if an attorney cannot make complete disclosure of the facts to its clients.
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Among the handicaps, the APO prohibits parties from sharing AEO documents with
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potential witnesses. Plaintiffs cannot prepare witnesses for depositions and trial when they
cannot show those witnesses a significant portion of the relevant evidence in the case. For
example, plaintiffs cannot show their witnesses internal Oracle emails designated AEO that
discuss the witness or issues raised by the witness. Moreover, AEO designations make
counsel a client to compromise * * * a case on the basis of information kept secret from the
C.
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Oracle in related investigations. Congress and federal authorities are investigating the failure
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confidential or AEO, Oracle has prevented the State from sharing documents with
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answer to questions by investigators. Yet, such documents and the information they contain
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are crucial to presenting federal authorities with a complete and balanced understanding of
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Further, as Oracle originally argued to this Court, Oracle should be limited to using
the AEO designation to documents unrelated to the Oregon Projects. Oracle, in arguing for
an AEO designation in the Protective Order, stated that the AEO designation was needed
because, according to Oracle, plaintiffs Requests for Production call for production of
documents beyond the Project[.] (Ex 24 to Wilson Decl (5/26/15 joint email from Oracle
and plaintiffs to the Court).) Oracle told this Court that Litigation Materials about the
Projects would warrant, at most, only confidential designation. (Id.) Contrary to Oracles
statements to this Court, Oracle designated documents about the Projects as AEO. Oracle
should not be allowed to hide documents about the HIX with inappropriate AEO
designations.
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(Exs 11 and 12 to
Wilson Decl.)
valid reason for permitting disclosure. See Deford v. Schmid Products Co., 120 FRD 648,
654 (D Md 1987) (The plaintiffs primary argument in favor of disclosure is their desire to
share information with other litigants [in other cases] and their counsel. This is an
appropriate goal under the Federal Rules of Civil Procedure[.]). Oracle should not be
permitted to use this Courts protective order to hide its wrongdoing from federal and state
authorities.
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D.
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The Court should order Oracle to re-designate all its documents in good
faith.
The Court should order Oracle to correct its bad faith over-designation. In In re
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ULLICO, the court held that a corporation that designated 99% of its documents
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confidential had grossly abused the use of the confidential designation. In re ULLICO
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Inc. Litig., 237 FRD at 317. The court ordered the corporation to come into compliance
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with the protective order by re-doing its entire confidentiality designations. Id. at 318.
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The court also ordered the corporation to pay the opposing parties attorney fees in
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Numerous other courts have entered similar orders. In Procaps S.A., 2015 WL
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4430955, the plaintiff designated 95% of its documents highly confidential. Based on that
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percentage, the court concluded that the plaintiffs use of the highly confidential designation
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was significantly incorrect and over-inclusive on a grand scale[.] Id. at *10. The court
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document basis of all 141,525 documents designated highly confidential and pay the
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defendant $25,000 in attorney fees. Id. at *9, 11. In Healthtrio, 2014 WL 6886923, at *3,
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the defendants designated 90% of the 226,834 documents it produced as AEO. The court
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found that such a percentage demonstrated that the defendants acted in bad faith. Id. The
court ordered the defendants to re-review and re-designate its production of documents and
pay the plaintiff its attorney fees in bringing the motion. Id. at *4; see also Koch v.
Greenberg, No. 07 CIV 9600 BSJ DF, 2012 WL 1449186, at *5 (SDNY Apr 13, 2012)
Am., Inc., 157 FRD at 647 (we order defendants to de-designate all of the Attorney's Eyes
forthwith.).
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America, Inc., here, the Court should require Oracle to remove its current designations and
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re-designate only documents that contain trade secrets with independent economic value
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II.
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Motion 2: The Court should order Oracle to immediately remove its improper
confidential and AEO designations from the Deposition Documents.
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In addition to ordering Oracle to re-designate its entire production, the Court should
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also order Oracles improper confidential and AEO designations removed from the
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Deposition Documents. Litigation documents and testimony are presumptively public unless
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a party shows good cause to prohibit their disclosure under a protective order. Oracle cannot
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establish good cause to prohibit the disclosure of the Deposition Documents. The Court
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should, therefore, order Oracle to remove the improper confidential and AEO
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Or., 661 F3d 417, 424 (9th Cir 2011) (quotation marks and citation omitted); San Jose
Mercury News, Inc. v. U.S. Dist. Court--N. Dist. (San Jose), 187 F3d 1096, 1103 (9th Cir
cause, a court may enter a protective order to limit the dissemination of pre-trial discovery
information. ORCP 36 C(7); San Jose Mercury News, 187 F3d at 1103 (Rule 26(c) [the
federal analog to ORCP 36 C] authorizes a district court to override this presumption where
good cause is shown.). If good cause is not shown, the discovery materials in question
should not receive judicial protection and therefore would be open to the public for
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inspection. In re Agent Orange Prod. Liab. Litig., 821 F2d 139, 145 (2d Cir 1987).
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B.
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Oregon law and the APO provide that Oracle bears the burden to show that the
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designation of the document shall have the burden of proof * * *.)); Citizens Util. Bd. of
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Or. v. Or. Pub. Util. Commn, 128 Or App 650, 658 (1994) (The party seeking protection
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must show that the information is a trade secret or confidential commercial information.).
Plaintiffs, in compliance with the APO, identif[ied] the document(s) at issue and the
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reason for the request. (APO 10 (rule); Ex 13 to Wilson Decl (complying with rule).) It is
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Oracles responsibility to state the reasons for refusing plaintiffs request. (APO 10.)
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Under an umbrella protective order such as the APO, the burden of proving confidentiality
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never shifts from the party asserting that claimonly the burden of raising that issue.
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Parkway Gallery Furniture, Inc. v. Kittinger/Pennsylvania House Grp., Inc., 121 FRD 264,
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268 (MDNC 1988) (citing Cipollone v. Liggett Grp., Inc., 785 F2d 1108, 1122 (3d Cir 1986)
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(holding that burden of proof would be at all times on the party requesting confidential
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protection)). Plaintiffs identified documents that Oracle improperly designated. Oracle has
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C.
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Under Oregon law, Oracle must show that each Deposition Document meets a two-
prong test. First, Oracle must show that each Deposition Document contains private
(APO 2); Citizens Util. Bd. of Or., 128 Or App at 658 (The party seeking protection must
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Second, if the document contains such protectable information, Oracle must then establish
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good cause for the protective order by demonstrating that disclosure will work a clearly
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defined and serious injury. Id. (quotation marks and citation omitted).
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1.
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The first prong of the test requires Oracle to establish that each of the Deposition
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information; (2) trade secrets; (3) commercially or competitively sensitive information, such
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under a law or regulation.6 (APO 2.) Oracle may not rely on bare and unsupported
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assertions to make this showing. See Koch, 2012 WL 1449186, at *8 (partys bare assertion
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demonstrate good cause for maintaining the confidentiality of that information under the
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Protective Order).
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This definition is consistent with the provision of ORCP 36 C(7), which permits a
court to enter a protective order protecting a trade secret or other confidential research,
development, or commercial information.
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Oregon law defines a trade secret as information, including a drawing, cost data,
customer list, formula, pattern, compilation, program, device, method, technique or process
that: (a) Derives independent economic value, actual or potential, from not being generally
known to the public or to other persons who can obtain economic value from its disclosure or
use; and (b) Is the subject of efforts that are reasonable under the circumstances to maintain
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trade secrets. See Take it Away, Inc. v. The Home Depot, Inc., No CIV.A 05-12484-DPW,
2009 WL 458552, at *7 (D Mass Feb 6, 2009) affd, 374 F Appx 47 (1st Cir 2010) (trade
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will result in a clearly defined and very serious injury to [the] business. See Andrew Corp.
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v. Rossi, 180 FRD 338, 341 (ND Ill 1998) (defining confidential business information)
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(quotation marks and citations omitted). According to the APO, this sort of information
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includes confidential research and development information. (APO 2.) The mere fact
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that a corporation does not ordinarily publicly disclose information is not sufficient to qualify
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Inc. v. HBO & Co., No 98CIV8721 (LAK), 2001 WL 225040, at *3 (SDNY Mar 7, 2001)
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mere fact that the particular datum has not previously been made available to the public.).
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Information that is old, stale, or out-dated does not qualify as commercially or competitively
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sensitive. Procter & Gamble Co. v. Nabisco Brands, Inc., 111 FRD 326, 331 (D Del 1986)
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2.
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If the first prong is satisfied, Oracle must establish good cause for
protecting the Deposition Documents by demonstrating that their
disclosure will work a clearly defined and serious injury.
If Oracle can satisfy the first prong of the test, the second prong requires Oracle to
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establish good cause for the protective order by demonstrating that disclosure will work a
clearly defined and serious injury. Citizens Util. Bd. of Or., 128 Or App at 658. Where, as
here, a business is the party seeking protection, it will have to show that disclosure would
cause significant harm to its competitive and financial position. That showing requires
examples, rather than broad, conclusory allegations of potential harm. Deford v. Schmid
Products Co., a Div. of Schmid Labs., 120 FRD 648, 653 (D Md 1987). The harm must be
significant, not a mere trifle. Citizens Util. Bd. of Or., 128 Or App at 658. Simply
because the disclosure of information might result in adverse publicity does not, in itself,
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will work a clearly defined and serious injury on a business: (1) will disclosure of the
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documents reveal information that could be used by a competitor to underbid the business?
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(2) will disclosure allow a competitor to steal the businesss suppliers? (3) will disclosure
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allow a competitor to steal the businesss customers? See Koch, 2012 WL 1449186, at *16
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(The testimony does not reveal information that could be used by a competitor of
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D.
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Oracle cannot meet its burden to show good cause to maintain the
confidential or AEO designations on the Deposition Documents
under the two-prong test.
The Deposition Documents do not satisfy either prong of the good cause test. None
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under a law or regulation. (Exs 1-10 to Wilson Decl) Even if they did, Oracle has not shown
26
that disclosure of these documents will work a clearly defined and serious injury on
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2
3
requires Oracle to state the reasons for refusing to remove the improper designations.
(APO 10.) Instead, it made a blanket statement that the Deposition Documents
undoubtedly reflect Oracle proprietary information[.] (Ex 14 to Wilson Decl) Oracle also
wrongly contended that it can cloak documents as confidential if they contain [1]
discussion regarding bugs and blockers, [2] communications identifying Oracles internal
testing processes, [3] discussion regarding resource allocation, and [4] internal reports on the
10
1.
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12
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blockers do not satisfy the two-prong test. Such discussions fail the first prong because the
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way the source code works when compiled and run is not a trade secret. Agency
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Solutions.Com, LLC, 819 F Supp 2d at 1017 (emphasis in original). Furthermore, the bugs
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and blockers concern Oracles work on one specific project that is no longer in use: Oregons
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HIX. The discussions of the bugs and blockers have no independent economic value, ORS
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646.461(4)(a), to Oracle. And, the discussions about bugs and blockers are two years old.
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Stale information does not qualify as commercially or competitively sensitive. See Procter
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& Gamble Co., 111 FRD at 331 (information that is two-to-three years old not entitled to
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protective order).7 Discussions about bugs and blockers also fail the second prong because
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Oracle cannot show that disclosure of the bugs and blockers on Oregons HIX Project would
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7
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In its contracts with plaintiffs, Oracle conceded that for the documents that Oracle
designated as confidential under the contracts, those documents do not need to be protected
as confidential if they are more than three years old. (Ex 26 to Wilson Decl at 4 (Cover
Oregon OLSA K, We each agree to hold each other's confidential information in
confidence for a period of three years from the date of disclosure.).)
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significantly harm Oracle by allowing Oracles competitors to undercut its bids, steal its
2.
5
6
warrant protection. These communications fail the first prong of the test because they do not
contain protectable information. Oracle has not identified, and cannot identify, any particular
testing process that is unique to Oracle. All software companies test their software.
Proprietary ways of doing the same thing that others in the same field do are not trade
10
secrets. Agency Solutions.Com, LLC v. TriZetto Grp., Inc., 819 F Supp 2d 1001, 1017 (ED
11
Cal 2011). Oracles decision to use one particular testing process as opposed to another is
12
also not a trade secret. See First Health Grp. Corp. v. Natl Prescription Admrs, Inc., 155 F
13
Supp 2d 194, 220 (M.D. Pa. 2001) (companys use of a particular commercially available
14
product not a trade secret). Even if such information were a trade secret or competitively
15
sensitive, Oracle cannot satisfy the second prong of the test because disclosure of this
16
information, two years after the fact, will not work a clearly defined and significant harm to
17
Oracle.
3.
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Third, discussion regarding resource allocation, and internal reports on the overall
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22
23
required by ORS 646.461(4)(a); their only value is specific to Oracles work for the State and
24
Cover Oregon. Moreover, these discussions and assessments do not contain drawing[s],
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26
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Documents are two or more years old. Oracle has made no showing that discussions about
resource allocation two years ago and assessments of a project that has long since been
abandoned have any value to Oracles competitors now. See Procter & Gamble Co., 111
FRD at 331 (information that is two-to-three years old not entitled to protective order).
4.
Oracle may also incorrectly argue that there is good cause to designate the Deposition
at the time they created the documents. A party cannot make a document confidential simply
10
by calling it confidential. See Take it Away, Inc., 2009 WL 458552, at *7 (Plaintiff cannot
11
create confidential trade secrets merely by entering into a nondisclosure agreement that
12
13
the document must actually contain trade secrets or commercially or competitively sensitive
14
information and disclosure must work a clearly defined and serious harm.
The Deposition Documents do not contain protectable information. Even if they did,
15
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Oracle cannot show that disclosure will work a clearly defined and significant harm. The
17
Court should order Oracle to remove its improper confidential and AEO designations
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Even where the two-part test weigh[s] in favor of protecting the discovery material
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* * *, a court must still consider whether redacting portions of the discovery material will
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661 F3d 417, 425 (9th Cir 2011). If the Court determines that some information contained
25
within the Deposition Documents warrants protection, the Court should order that
26
information redacted so that the remainder of the documents can be produced without
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CONCLUSION
Plaintiffs respectfully request that the Court order Oracle to remove the confidential
3
4
and AEO designations, order Oracle to review its entire document production, and within
30 days re-designate only those documents that comply with the Courts Amended Protective
Order and Oregon law and provide the justification for each designation, just like it would for
a privilege log.
Plaintiffs also request that the Court grant their motion to remove Oracles improper
8
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confidential and attorneys eyes only designations from the 10 Deposition Documents.
(Exs 1-10 to Wilson Decl.)
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ELLEN ROSENBLUM
ATTORNEY GENERAL
FOR THE STATE OF OREGON
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By:
15
s/ Harry B. Wilson
David B. Markowitz, OSB No. 742046
DavidMarkowitz@MarkowitzHerbold.com
Lisa A. Kaner, OSB No. 881373
LisaKaner@MarkowitzHerbold.com
Dallas DeLuca, OSB No. 072992
DallasDeLuca@MarkowitzHerbold.com
Harry B. Wilson, OSB No. 077214
HarryWilson@MarkowitzHerbold.com
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Brenna Legaard
Jeffrey S. Eden
Schwabe, Williamson & Wyatt, P.C.
1211 SW Fifth Ave., Suite 1900
Portland, OR 97204
Attorneys for Defendants Oracle
America, Inc., Stephen Bartolo, Thomas
Budnar, Kevin Curry, Safra Catz, and Brian
Kim
U.S. Mail
Facsimile
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Email: blegaard@schwabe.com
jeden@schwabe.com
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Karen G. Johnson-McKewan
Robert S. Shwarts
Erin M. Connell
Nancy E. Harris
Catherine Y. Lui
Warrington S. Parker III
Orrick, Herrington & Sutcliffe LLP
The Orrick Building
405 Howard Street
San Francisco, CA 94105-2669
Attorneys for Defendants Oracle
America, Inc., Stephen Bartolo, Thomas
Budnar, Kevin Curry, Safra Catz, and Brian
Kim
U.S. Mail
Facsimile
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Email: kjohnson-mckewan@orrick.com
rshwarts@orrick.com
econnell@orrick.com
nharris@orrick.com
clui@orrick.com
wparker@orrick.com
Via Odyssey eFile & Serve
Jacob M. Heath
Robert L. Uriarte
Orrick, Herrington & Sutcliffe LLP
1000 Marsh Road
Menlo Park, CA 94025
Attorneys for Defendants Oracle
America, Inc., Stephen Bartolo, Thomas
Budnar, Kevin Curry, Safra Catz, and Brian
Kim
U.S. Mail
Facsimile
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Email: jheath@orrick.com
ruriarte@orrick.com
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CERTIFICATE OF SERVICE
Robert P. Reznick
Orrick, Herrington & Sutcliffe LLP
1152 15th Street, NW
Washington, DC 20005-1706
Attorneys for Defendants Oracle
America, Inc., Stephen Bartolo, Thomas
Budnar, Kevin Curry, Safra Catz, and Brian
Kim
U.S. Mail
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Email: rreznick@orrick.com
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Milo Petranovich
Pilar C. French
Lane Powell PC
601 SW Second Ave., Suite 2100
Portland, OR 97204-3158
Attorneys for Defendants Oracle
America, Inc., Stephen Bartolo, Thomas
Budnar, Kevin Curry, Safra Catz, Brian Kim,
Ravi Puri
U.S. Mail
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Email: PetranovichM@lanepowell.com
FrenchP@lanepowell.com
docketing-pdx@lanepowell.com
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Edward N. Siskel
Charles Speth
Jamie S. Gorelick
Matthew L. Haws
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave.
Washington, DC 20006
Attorneys for Defendants Oracle
America, Inc., Stephen Bartolo, Thomas
Budnar, Kevin Curry, Safra Catz, Brian Kim,
Ravi Puri
U.S. Mail
Facsimile
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Email: Edward.siskel@wilmerhale.com
Charles.speth@wilmerhale.com
Jamie.gorelick@wilmerhale.com
Matthew.haws@wilmerhale.com
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Deborah K. Miller
Oracle Corporation Legal Department
M/S 5 Op 764
500 Oracle Pkwy
Redwood City, CA 94065-1675
Attorneys for Defendant Oracle America, Inc.
U.S. Mail
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Email: deborah.miller@oracle.com
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Dorian E. Daley
Oracle Corp
Mail Stop 5OP784
500 Oracle Pkwy
Redwood City, CA 94065
Attorneys for Defendant Oracle America, Inc.
U.S. Mail
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Email: dorian.daley@oracle.com
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CERTIFICATE OF SERVICE
Peggy E. Bruggman
Oracle USA,Inc
M/S 5OP772
500 Oracle Pkwy
Redwood Shores, CA 94065
Attorneys for Defendant Oracle America, Inc.
U.S. Mail
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Email: peggy.bruggman@oracle.com
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Timothy D. Belevetz
Holland & Knight
1600 Tysons Blvd., Suite 700
Tysons Corner, VA 22102
Attorneys for Defendant Mythics, Inc.
U.S. Mail
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Email: timothy.belevetz@hklaw.com
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Dayna E. Underhill
Holland & Knight LLP
111 SW Fifth Ave., Suite 2300
Portland, OR 97204
Attorneys for Defendant Mythics, Inc.
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Email: dayna.underhill@hklaw.com
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s/ Harry B. Wilson
_______________________________________
Harry B. Wilson, OSB No. 077214
Special Assistant Attorney General for
Plaintiffs
CERTIFICATE OF SERVICE