Mediatek Inc. v. NXP Semiconductors N.V., 2:21-cv-04969

Background

MediaTek Inc. and MediaTek USA (Plaintiffs) sued NXP, Avnet, Arrow, Bosch, and Continental (Defendants) in the Central District of California alleging patent-related claims concerning listed "Patents‑in‑Suit."
Parties anticipated disclosure of confidential, proprietary, trade‑secret, and commercially sensitive materials during discovery and jointly proposed a Protective Order.
The Court entered the stipulated Protective Order on March 14, 2022, establishing three confidentiality tiers: CONFIDENTIAL; CONFIDENTIAL – ATTORNEYS’ EYES ONLY (AEO); and CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY – SOURCE CODE.
The Order contains a two‑year prosecution bar for any person on behalf of Plaintiffs who receives AEO or source‑code materials (bars drafting/amending patent claims and related prosecution activities).
Detailed, location‑based source‑code review protocols were adopted (secure room/computer, no recordable devices, strict printing limits, logging and limited copies, U.S.-only access, monitoring).
Limits on inter‑defendant sharing (Plaintiffs may not disclose one Defendant’s Protected Material to other Defendants without consent), retention/destruction requirements, procedures for designation challenges, inadvertent production, and expert/In‑house disclosures were specified.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Scope and tiers of confidentiality designations	Need enough protection to allow litigation use while enabling defense	Need strict tiers to protect trade secrets, pricing, source code and competitive info	Court adopted three‑tier regime (CONFIDENTIAL; AEO; AEO‑SOURCE CODE) with enumerated recipients and uses
Patent prosecution bar for recipients of AEO/source code	Plaintiffs sought access for litigation; urged limited prosecution restrictions	Defendants sought a bar to prevent use of highly sensitive technical materials in future prosecution	Court approved a person‑level prosecution bar lasting until two years after final resolution, with limited exceptions (e.g., submission of prior art)
Source‑code review, copying, and printing controls	Plaintiffs needed practical access to inspect and use code in reports/depositions	Defendants required stringent controls to prevent copying/transmission and foreign access	Court imposed secure on‑site review, no recordable devices, limited hand‑written notes, narrow printing (burden on recipient to justify), limited electronic images, and logging of copies
Experts/in‑house access and approval process	Plaintiffs sought access for necessary experts and in‑house counsel to prosecute/defend claims	Defendants demanded vetting, U.S.‑only access, and exclusion of experts/in‑house involved in competitive decision‑making	Court required pre‑disclosure notices, CVs and disclosures, 14‑day objection period, Exhibit A undertakings, and bars experts/in‑house who engage in competitive decision‑making from receiving AEO/source code

Key Cases Cited

U.S. Steel v. United States, 730 F.2d 1465 (Fed. Cir. 1984) (definition and limits on "competitive decision‑making" for confidentiality recipients)
Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992) (application of competitive decision‑making standard in protective‑order contexts)