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IN THE CIRCUIT COURT OF THE STATE OF OREGON

FOR THE COUNTY OF MARION

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ELLEN ROSENBLUM, the Attorney General


for the State of Oregon; STATE OF
OREGON, by and through Ellen Rosenblum,
the Attorney General for the State of Oregon,
the Oregon Health Authority, and the Oregon
Department of Human Services; and the
OREGON HEALTH INSURANCE
EXCHANGE CORPORATION, dba Cover
Oregon, an Oregon public corporation,

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Plaintiffs,

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vs.

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ORACLE AMERICA, INC., a Delaware


corporation; STEPHEN BARTOLO, an
individual; THOMAS BUDNAR, an
individual; KEVIN CURRY, an individual;
SAFRA CATZ, an individual; BRIAN KIM,
an individual; RAVI PURI, an individual; and
MYTHICS, INC., a Virginia corporation,

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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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Oral argument requested


REDACTED UNDER
PROTECTIVE ORDER

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REDACTED UNDER PROTECTIVE ORDER

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ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
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(503) 295-3085
Fax: (503) 323-9105

TABLE OF CONTENTS

COMPLIANCE WITH UTCR 5.010 ....................................................................................... 1

COMPLIANCE WITH UTCR 5.050 ....................................................................................... 1

MOTIONS ................................................................................................................................ 1

POINTS AND AUTHORITIES ............................................................................................... 1

INTRODUCTION .................................................................................................................... 1

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SUMMARY OF THE ARGUMENT ....................................................................................... 2


I.

Oracle cloaks in secrecy documents that contradict its position and show
that Oracle was at fault. ................................................................................................ 2

II.

Oracle violates the Amended Protective Order by over-designating


documents as confidential and AEO. ..................................................................... 5

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FACTUAL BACKGROUND ................................................................................................... 7


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I.

The Amended Protective Order limits what can be designated


confidential and AEO to trade secrets and competitively sensitive
information. ................................................................................................................... 7

II.

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Oracle designated more than 95% of its Litigation Material confidential


or AEO and refuses to remove those designations. ................................................... 8

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ARGUMENT .......................................................................................................................... 10

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I.

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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. ............................................................................... 10
A.

Oracle failed to designate its documents in good faith. .................................. 10

B.

Oracles over-designation obstructs plaintiffs ability to prepare its


case. ................................................................................................................. 13

C.

Oracles over-designation hampers plaintiffs ability to fully


respond to government investigations. ........................................................... 14

D.

The Court should order Oracle to re-designate all its documents in


good faith. ....................................................................................................... 15

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Motion 2: The Court should order Oracle to immediately remove its


improper confidential and AEO designations from the Deposition
Documents. ................................................................................................................. 16

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A.

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II.

Pre-trial discovery documents are public unless a party establishes


good cause to limit access to trade secrets or other confidential
research, development, or commercial information. ...................................... 16

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL

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B.

Oracle bears the burden of demonstrating good cause to maintain


the confidential and AEO designations on the Deposition
Documents. ..................................................................................................... 17

C.

To establish good cause warranting a confidential or AEO


designation, Oracle must show that each document meets a twoprong test. ........................................................................................................ 18

1.

Oracle must establish that the Deposition Documents


contain protectable information. ......................................................... 18

2.

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. .................................................................. 19

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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
1.

HIX bugs and blockers are not trade secrets or commercially


sensitive............................................................................................... 21

2.

Communications regarding testing are not trade secrets or


commercially sensitive........................................................................ 22

3.

Resource allocation and internal assessments are not trade


secrets or commercially sensitive. ...................................................... 22

4.

Documents Oracle marked confidential for internal


purposes are not trade secrets or commercially sensitive. .................. 23

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E.

Even if some of the Deposition Documents contain protectable


information, the Court should order that information redacted and
remove the confidential or AEO designations. ........................................ 23

CONCLUSION ....................................................................................................................... 24

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ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL

- ii -

SUITE 3000 PACWEST CENTER


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1
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TABLE OF AUTHORITIES
Cases

Page(s)

Agency Solutions.Com, LLC,


819 F Supp 2d at 1017 .......................................................................................... 21, 22

Andrew Corp. v. Rossi,


180 FRD 338, 341 (ND Ill 1998) ................................................................................ 19

6
7

Arvco Container Corp. v. Weyerhaeuser Co.,


No 1:08-CV-548, 2009 WL 311125 (WD Mich Feb 9, 2009) ................................... 14

Brown & Williamson Tobacco Corp. v. F.T.C.,


710 F2d 1165, 1179 (6th Cir 1983) .............................................................................. 6

Cipollone v. Liggett Grp., Inc.,


785 F2d 1108, 1122 (3d Cir 1986).............................................................................. 17

10
11

Citizens Util. Bd. of Or. v. Or. Pub. Util. Commn,


128 Or App 650, 658 (1994) ........................................................... 5, 10, 17, 18, 20, 21

12

Deford v. Schmid Products Co.,


120 FRD 648, 654 (D Md 1987)........................................................................... 15, 20

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First Health Grp. Corp. v. Natl Prescription Admrs, Inc.,


155 F Supp 2d 194, 220 (MD Pa 2001) ...................................................................... 22

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15
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Healthtrio, LLC v. Aetna, Inc.,


No 12-CV-03229-REB-MJW, 2014 WL 6886923
(D Colo Dec 5, 2014) ............................................................................ 5, 11, 13, 15, 16
In re Agent Orange Prod. Liab. Litig.,
821 F2d 139, 145 (2d Cir 1987).................................................................................. 17
In re Parmalat Sec. Litig.,
258 FRD 236, 244 (SDNY 2009) ............................................................................... 20

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In re Roman Catholic Archbishop of Portland


in Or, 661 F3d 424 (9th Cir 2011) .................................................................... 5, 16, 23

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In re ULLICO Inc. Litig.,


237 FRD at 317 ......................................................................................... 11, 13, 15, 16

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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

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL

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Procaps S.A. v. Patheon Inc.,


No. 12-24356-CIV, 2015 WL 4430955 (SD Fla July 20, 2015) .................... 13, 15, 16
Procter & Gamble Co. v. Nabisco Brands, Inc.,
111 FRD 326, 331 (D Del 1986) .................................................................... 19, 21, 23
Richmond Newspapers, Inc. v. Virginia,
448 US 555, 595 (1980) ................................................................................................ 6

Salomon Smith Barney, Inc. v. HBO & Co.,


No 98CIV8721 (LAK), 2001 WL 225040 (SDNY Mar 7, 2001) .............................. 19

San Jose Mercury News,


187 F3d at 1103 ......................................................................................................... 17

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................................................... 8

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Take It Away, Inc. v. The Home Depot, Inc.,


No CIV.A 05-12484-DPW, 2009 WL 458552 (D Mass Feb 6, 2009)
affd, 374 F Appx 47 (1st Cir 2010) .......................................................... 7, 13, 19, 23
THK Am., Inc. v. NSK Co.,
157 FRD 637, 647 (ND Ill 1993) ............................................................................ 6, 16

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THK America, Inc. v. NSK Co.,


157 FRD 637, 647 (ND Ill 1993) .................................................................... 11, 13, 16

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Statutes

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ORS 646.461 ........................................................................................................... 7, 19, 21, 22

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Rules
ORCP 36 C ............................................................................................................. 1, 10, 17, 18

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ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL

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COMPLIANCE WITH UTCR 5.010

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

resolve the dispute.

COMPLIANCE WITH UTCR 5.050

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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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Pursuant to ORCP 36 C, plaintiffs move:

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1.

For an order requiring Oracle to remove its confidential and attorneys

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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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justification for each designation.

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2.

For an order removing Oracles confidential and AEO designations from

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the 10 documents described in the declaration of Harry B. Wilson (Wilson Decl) and

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attached to that declaration as Exhibits 1 10 (the Deposition Documents).

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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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POINTS AND AUTHORITIES

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INTRODUCTION

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In violation of this Courts Amended Protective Order (APO), Oracle designated

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PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
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public letter from its CEO excoriating Oregon officials, presented a slideshow to Congress

absolving itself of wrongdoing, lobbied each member of Oregons congressional delegation,

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

to the leadership of the Oregon Senate.


Although its internal documents support the States claims, Oracle has told Congress,

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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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Oracle over-designated, among others, the following documents without justification:

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A November 22, 2013 internal email from an Oracle developer stating that

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PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
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(Ex 1 to

Wilson Decl.)

An October 16, 2013 senior Oracle developers assessment that

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(Ex 2 to Wilson Decl.)

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A November 2013 Oracle assessment of its software development concludes


that

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(Ex 4 to Wilson Decl.)

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A February 22, 2014 email between Oracle developers indicates tha

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(Ex 5 to Wilson Decl.)

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Another Oracle email confirmed that

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(Ex 6 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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(Ex 7 to Wilson Decl.)

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In the same March 16, 2012 email, the Senior Practice Director recommends
that

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4-

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
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(Id.)

A November 16, 2013 email exchange

(Ex 8 to Wilson Decl.)

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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Oracle violates the Amended Protective Order by over-designating documents as


confidential and AEO.

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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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access to litigation documents and information produced during discovery. In re Roman

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Catholic Archbishop of Portland in Or., 661 F3d 417, 424 (9th Cir 2011) (quotation marks

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and citation omitted).


However, Oracles violation of the APO hides the true story. The APO permits the

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parties to designate documents containing private personal information, trade secrets, and

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commercially and competitively sensitive information as confidential or attorneys eyes

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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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confidential or attorneys eyes only designations to approximately 97% of the 514,000

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documents it produced. (Declaration of Greg Scott (Scott Decl) 2, 4.) As one court put

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it: 90% is an absurd number. Healthtrio, LLC v. Aetna, Inc., No 12-CV-03229-REB-MJW,

5-

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

2014 WL 6886923, at *3 (D Colo Dec 5, 2014). Oracles abuse of the APO is further

demonstrated by its confidentiality designations of even innocuous documents such as emails


(Exs 15 23 to Wilson

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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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with heavy caseloads and backlogs to be taxed by parties engaging in uncooperative,

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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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637, 647 (ND Ill 1993).

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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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failed. As Justice Brennan observed, Secrecy is profoundly inimical to [the] demonstrative

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purpose of the trial process. Richmond Newspapers, Inc. v. Virginia, 448 US 555, 595

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(1980) (Brennan, J. concurring). It insulates the participants, masking impropriety,

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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

6-

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
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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

I.

(Litigation Material) as confidential any Litigation Material, or any portion thereof,

* * * that contains private personal information, including financial information, or that

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contains trade secrets, commercially or competitively sensitive information, including

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confidential research or development information, or information subject to protection under

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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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secrets, or is otherwise extremely proprietary or confidential such that disclosure of this

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information, if reviewed by anyone other than attorneys, will significantly harm the

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designating party[.] (Id.)

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A trade secret is information, including a drawing, cost data, customer list,

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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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secrecy. ORS 646.461(4). Commercially or competitively sensitive information is

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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).

7-

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

The APO establishes restrictions on dissemination of Litigation Material designated

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

commercial, business, competitive, or other purpose[.] (APO 4.)


Litigation Material marked confidential may be shared only with the Court, counsel

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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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parties, consultants and experts. (Id.)


Under the APO, any party can challenge another parties designation of Litigation

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Material as confidential or AEO. The party opposing designation (the Requesting

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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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Oracle designated more than 95% of its Litigation Material confidential or


AEO and refuses to remove those designations.

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Oracle has produced approximately 514,000 documents. (Scott Decl 2.) On

8-

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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

not respond. (Id.) To determine what percentage of documents Oracle designated

confidential or AEO, plaintiffs randomly selected 1,000 documents from Oracles

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%

of Oracles documents are designated confidential or AEO.

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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as either CONFIDENTIAL or ATTORNEYS EYES ONLY. (Ex 25 to Wilson Decl at

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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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(Exs 1 - 10 to Wilson Decl.)


Oracle refused to remove its inappropriate confidential and AEO designations.

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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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1

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Plaintiffs limited their selection to ten documents in order to streamline resolution of


this motion. The parties can use the Courts ruling on these ten Deposition Documents to
guide the de-designation of the remainder of Oracles over-designated production.
9-

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

undoubtedly reflect Oracles confidential information[.] (Id. at 1.) Oracle failed to

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

11

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.

12

Where a party does not apply confidential or AEO designations properly and in

13

good faith, a court may order that party to re-designate its documents. Oracles designation

14

of approximately 97% of its documents as confidential or AEO demonstrates that Oracle

15

did not comply with the APO. The Court should order Oracle to re-designate its documents

16

in good faith.

10

I.

17

A.

18

The APO requires the parties designate their documents in good faith. Paradigm All.,

Oracle failed to designate its documents in good faith.

19

Inc. v. Celeritas Techs., LLC, 248 F.R.D. 598, 605 (D. Kan. 2008) (Implicit in the

20

protective order and its provision for designating documents as confidential or AEO is a

21

requirement of good faith.).2 Despite this requirement, Oracle designated approximately

22

97% of its documents either confidential or AEO. (Scott Decl 4.) Indeed, Oracle

23

admitted that it designated every single email exchanged between Oracle and the State that it

24

produced as confidential. (Ex 25 to Wilson Decl (11/6/2015 letter from Oracle))

25
2

26

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).
10 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

Oracles designation of approximately 97% of its documents confidential or AEO

1
2

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

and stated that defendants over-designation was uncooperative, dilatory, and

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

10

marked 90% of its documents AEO. Healthtrio, LLC v. Aetna, Inc., No 12-CV-03229-

11

REB-MJW, 2014 WL 6886923, at *3 (D Colo Dec 5, 2014). The court stated that 90% is

12

an absurd number even though this is a complex patent case going to the heart of

13

Defendants business. Id. In In re ULLICO Inc. Litig., 237 FRD at 317, a party designated

14

99% of documents confidential. The court concluded that the party grossly abused the

15

use of the confidential designation. Id.


A cursory examination of Oracles document production reveals that Oracle

16
17

designated countless documents confidential or AEO with no plausible basis. Examples

18

include:

19

ORACLE_STATE_00006269
(Ex 15 to Wilson Decl.);

ORACLE STATE 00028610

20
21

(Ex 16

22

to Wilson Decl.);

23

ORACLE_STATE_00998581
(Ex 17 to Wilson Decl.);

ORACLE_STATE_00455290
Wilson Decl.);

24
25
26

11 -

(Ex 18 to

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
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ORACLE_STATE_01666013
(Ex 19 to Wilson Decl.);

ORACLE STATE 01342082

(Ex 20 to
Wilson Decl.);

ORACLE STATE 01642673


(Ex 21
to Wilson Decl.);

7
8

ORACLE_STATE_00997249

(Ex
22 to Wilson Decl.).

10
11

Plaintiffs identified each of these documents to Oracle in their December 10, 2015 letter. (Ex

12

13 to Wilson Decl.) In response, Oracles December 18, 2015 letter did not contest that the

13

documents did not warrant confidential or AEO designations.3 (Ex 14 to Wilson Decl.)

14

Nonetheless, Oracle did not agree to remove the improper designations or to examine the

15

remainder of its designations. These documents, as well as Oracles improper designation of

16

approximately 97% of its documents as either confidential or AEO demonstrate that

17

Oracle did not designate its documents in good faith.4

18
19

In addition, Oracle concedes that it ignored the APO by designating documents as


confidential simply because Oracle had written the word confidential on the documents

20
21
22
23
24
25

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).
4
Indeed, Oracle even designated
3

26

12 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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

Away, Inc., 2009 WL 458552, at *7 (party cannot manufacture confidential status).


Just as in THK America, Healthtrio, and In re ULLICO, Oracles designation of

8
9
10

approximately 97% of its documents confidential or AEO is absurd and demonstrates


that Oracle did not designate its documents in good faith.
Oracles over-designation obstructs plaintiffs ability to prepare its case.

11

B.

12

Oracles bad faith designation of approximately 97% of its documents confidential

13

or AEO obstructs plaintiffs ability to prepare its case. The improper use of the

14

confidential designation create[s] unnecessary logistical restraints on [plaintiffs] filing

15

these documents with the court, including * * * having to file all of these documents under

16

seal. In re ULLICO Inc. Litig., 237 FRD at 318. Moreover, by over-designating its

17

documents in bad faith, Oracle inequitably shifts the burden of reviewing those documents

18

for protectable information from itself to plaintiffs, wasting plaintiffs time and resources.

19

See Procaps S.A. v. Patheon Inc., No. 12-24356-CIV, 2015 WL 4430955, at *8 (S.D. Fla.

20

July 20, 2015) (it is inequitable to shift the burden of reviewing documents to the party

21

receiving those documents).


Oracles improper designation of documents as AEO poses a significant handicap

22
23

on plaintiffs because discovery, trial preparation, and trial are made more difficult and

24

expensive if an attorney cannot make complete disclosure of the facts to its clients.

25

Procaps, 2015 WL 4430955, at *6 (quotation marks, citation, and alterations omitted).

26

Among the handicaps, the APO prohibits parties from sharing AEO documents with

13 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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

settlement discussion impractical: It is difficult, and perhaps impossible, for an attorney to

counsel a client to compromise * * * a case on the basis of information kept secret from the

client. Arvco Container Corp. v. Weyerhaeuser Co., No 1:08-CV-548, 2009 WL 311125, at

*6 (WD Mich Feb 9, 2009).5

C.

10

Oracles over-designation hampers plaintiffs ability to fully respond to


government investigations.

11

Oracles improper designations prevent plaintiffs from using documents produced by

12

Oracle in related investigations. Congress and federal authorities are investigating the failure

13

of Oregons health insurance exchange to launch. By designating its documents

14

confidential or AEO, Oracle has prevented the State from sharing documents with

15

Congressional and federal investigators or referring to the content in those documents in

16

answer to questions by investigators. Yet, such documents and the information they contain

17

are crucial to presenting federal authorities with a complete and balanced understanding of

18

the history of the health insurance exchange project.

19
20
21
22
23
24
25
26

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.
14 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

1
2

(Exs 11 and 12 to
Wilson Decl.)

Facilitating the sharing of documents produced in discovery in related actions is a

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.

10

D.

11

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

12
13

ULLICO, the court held that a corporation that designated 99% of its documents

14

confidential had grossly abused the use of the confidential designation. In re ULLICO

15

Inc. Litig., 237 FRD at 317. The court ordered the corporation to come into compliance

16

with the protective order by re-doing its entire confidentiality designations. Id. at 318.

17

The court also ordered the corporation to pay the opposing parties attorney fees in

18

challenging the over-designation.

19

Numerous other courts have entered similar orders. In Procaps S.A., 2015 WL

20

4430955, the plaintiff designated 95% of its documents highly confidential. Based on that

21

percentage, the court concluded that the plaintiffs use of the highly confidential designation

22

was significantly incorrect and over-inclusive on a grand scale[.] Id. at *10. The court

23

ordered the plaintiff to perform a good faith re-designation, on a specific, document-by-

24

document basis of all 141,525 documents designated highly confidential and pay the

25

defendant $25,000 in attorney fees. Id. at *9, 11. In Healthtrio, 2014 WL 6886923, at *3,

26

the defendants designated 90% of the 226,834 documents it produced as AEO. The court

15 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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)

(over-designating party directed to review all of his confidentiality designations * * * on a

document-by-document basis, and to make good-faith revisions to his designations); THK

Am., Inc., 157 FRD at 647 (we order defendants to de-designate all of the Attorney's Eyes

Only documents and reclassify them Confidential or Non-confidential, and to do so

forthwith.).

10

Applying the decisions in In re ULLICO, Procaps, Healthtrio, Koch, and THK

11

America, Inc., here, the Court should require Oracle to remove its current designations and

12

re-designate only documents that contain trade secrets with independent economic value

13

adhering to the terms of the APO and Oregon law.

14

II.

15

Motion 2: The Court should order Oracle to immediately remove its improper
confidential and AEO designations from the Deposition Documents.

16

In addition to ordering Oracle to re-designate its entire production, the Court should

17

also order Oracles improper confidential and AEO designations removed from the

18

Deposition Documents. Litigation documents and testimony are presumptively public unless

19

a party shows good cause to prohibit their disclosure under a protective order. Oracle cannot

20

establish good cause to prohibit the disclosure of the Deposition Documents. The Court

21

should, therefore, order Oracle to remove the improper confidential and AEO

22

designations from the Deposition Documents. (Exs 1 - 10 to Wilson Decl.)


A.

23
24

Pre-trial discovery documents are public unless a party establishes good


cause to limit access to trade secrets or other confidential research,
development, or commercial information.

25

As a general rule, the public is permitted access to litigation documents and

26

information produced during discovery. In re Roman Catholic Archbishop of Portland in

16 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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

1999) (pre-trial discovery is presumptively public). However, upon a showing of good

cause, a court may enter a protective order to limit the dissemination of pre-trial discovery

containing trade secret[s] or other confidential research, development, or commercial

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

10

inspection. In re Agent Orange Prod. Liab. Litig., 821 F2d 139, 145 (2d Cir 1987).

11

B.

12

Oracle bears the burden of demonstrating good cause to maintain the


confidential and AEO designations on the Deposition Documents.

13

Oregon law and the APO provide that Oracle bears the burden to show that the

14

Deposition Documents warrant protection. (APO 10 (The proponent of retaining the * * *

15

designation of the document shall have the burden of proof * * *.)); Citizens Util. Bd. of

16

Or. v. Or. Pub. Util. Commn, 128 Or App 650, 658 (1994) (The party seeking protection

17

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

18
19

reason for the request. (APO 10 (rule); Ex 13 to Wilson Decl (complying with rule).) It is

20

Oracles responsibility to state the reasons for refusing plaintiffs request. (APO 10.)

21

Under an umbrella protective order such as the APO, the burden of proving confidentiality

22

never shifts from the party asserting that claimonly the burden of raising that issue.

23

Parkway Gallery Furniture, Inc. v. Kittinger/Pennsylvania House Grp., Inc., 121 FRD 264,

24

268 (MDNC 1988) (citing Cipollone v. Liggett Grp., Inc., 785 F2d 1108, 1122 (3d Cir 1986)

25

(holding that burden of proof would be at all times on the party requesting confidential

26

protection)). Plaintiffs identified documents that Oracle improperly designated. Oracle has

17 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

the burden to justify its designations.

C.

3
4

To establish good cause warranting a confidential or AEO


designation, Oracle must show that each document meets a two-prong
test.

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

personal information, including financial information, * * * trade secrets, commercially or

competitively sensitive information, including confidential research or development

information, or information subject to protection under applicable law or regulation[.]

(APO 2); Citizens Util. Bd. of Or., 128 Or App at 658 (The party seeking protection must

10

show that the information is a trade secret or confidential commercial information.).

11

Second, if the document contains such protectable information, Oracle must then establish

12

good cause for the protective order by demonstrating that disclosure will work a clearly

13

defined and serious injury. Id. (quotation marks and citation omitted).

14

1.

15

Oracle must establish that the Deposition Documents contain


protectable information.

The first prong of the test requires Oracle to establish that each of the Deposition

16
17

Documents contains: (1) private personal information, such as personal financial

18

information; (2) trade secrets; (3) commercially or competitively sensitive information, such

19

as confidential research or development information; or (4) information subject to protection

20

under a law or regulation.6 (APO 2.) Oracle may not rely on bare and unsupported

21

assertions to make this showing. See Koch, 2012 WL 1449186, at *8 (partys bare assertion

22

that information is commercially sensitive is patently insufficient to satisfy his burden to

23

demonstrate good cause for maintaining the confidentiality of that information under the

24

Protective Order).

25
6

26

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.
18 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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

its secrecy. ORS 646.461(4).


Commercially or competitively sensitive information is essentially identical to

7
8

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

10

secrets and confidential business information are essentially identical concepts).

11

Commercially and competitively sensitive information is information of which disclosure

12

will result in a clearly defined and very serious injury to [the] business. See Andrew Corp.

13

v. Rossi, 180 FRD 338, 341 (ND Ill 1998) (defining confidential business information)

14

(quotation marks and citations omitted). According to the APO, this sort of information

15

includes confidential research and development information. (APO 2.) The mere fact

16

that a corporation does not ordinarily publicly disclose information is not sufficient to qualify

17

such information as commercially or competitively sensitive. See Salomon Smith Barney,

18

Inc. v. HBO & Co., No 98CIV8721 (LAK), 2001 WL 225040, at *3 (SDNY Mar 7, 2001)

19

([I]mplicit in the notion of confidential business information is something beyond the

20

mere fact that the particular datum has not previously been made available to the public.).

21

Information that is old, stale, or out-dated does not qualify as commercially or competitively

22

sensitive. Procter & Gamble Co. v. Nabisco Brands, Inc., 111 FRD 326, 331 (D Del 1986)

23

(information that is two-to-three years old not entitled to protective order).

24

2.

25
26

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

19 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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

specific demonstrations of fact, supported where possible by affidavits and concrete

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,

10

suffice to render it proprietary or commercially sensitive, sufficient to justify judicial

11

protection from disclosure. Koch, 2012 WL 1449186, at *2 (quoting In re Parmalat Sec.

12

Litig., 258 FRD 236, 244 (SDNY 2009)).

13

Several questions can guide the determination of whether disclosure of documents

14

will work a clearly defined and serious injury on a business: (1) will disclosure of the

15

documents reveal information that could be used by a competitor to underbid the business?

16

(2) will disclosure allow a competitor to steal the businesss suppliers? (3) will disclosure

17

allow a competitor to steal the businesss customers? See Koch, 2012 WL 1449186, at *16

18

(The testimony does not reveal information that could be used by a competitor of

19

Greenbergs to underbid him, to raid his sources, or to steal his customers.).

20

D.

21
22

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

23

of the Deposition Documents contain private personal information, trade secrets,

24

commercially or competitively sensitive information, or information subject to protection

25

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

20 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

Oracle. Citizens Util. Bd. of Or., 128 Or App at 658.


Oracles December 18 letter fails to justify Oracles improper designations. The APO

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

overall assessments of projects[.] (Id. (numbers added).)

10

1.

11

HIX bugs and blockers are not trade secrets or commercially


sensitive.

Oracles conclusory explanations do not establish good cause to designate the

12
13

Deposition Documents confidential or AEO. First, [d]iscussions regarding bugs and

14

blockers do not satisfy the two-prong test. Such discussions fail the first prong because the

15

way the source code works when compiled and run is not a trade secret. Agency

16

Solutions.Com, LLC, 819 F Supp 2d at 1017 (emphasis in original). Furthermore, the bugs

17

and blockers concern Oracles work on one specific project that is no longer in use: Oregons

18

HIX. The discussions of the bugs and blockers have no independent economic value, ORS

19

646.461(4)(a), to Oracle. And, the discussions about bugs and blockers are two years old.

20

Stale information does not qualify as commercially or competitively sensitive. See Procter

21

& Gamble Co., 111 FRD at 331 (information that is two-to-three years old not entitled to

22

protective order).7 Discussions about bugs and blockers also fail the second prong because

23

Oracle cannot show that disclosure of the bugs and blockers on Oregons HIX Project would

24
7

25
26

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.).)
21 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

significantly harm Oracle by allowing Oracles competitors to undercut its bids, steal its

clients, or gain its suppliers.

2.

Communications regarding testing are not trade secrets or


commercially sensitive.

Second, communications identifying Oracles internal testing processes do not

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.

18
19

Resource allocation and internal assessments are not trade secrets


or commercially sensitive.

Third, discussion regarding resource allocation, and internal reports on the overall

20
21

assessments of projects are not subject to confidential or AEO designations. Oracle

22

obtains no independent economic value from these discussions and assessments, as

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],

25

cost data, customer list[s], formula[s], pattern[s], compilation[s], program[s], device[s],

26

method[s], technique[s] or process[es.] ORS 646.461(4). Furthermore, the Deposition

22 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

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.

Documents Oracle marked confidential for internal purposes


are not trade secrets or commercially sensitive.

Oracle may also incorrectly argue that there is good cause to designate the Deposition

Documents confidential or AEO because Oracle employees marked them as confidential

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

claims information as proprietary.). To qualify as confidential or AEO under the APO,

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
16

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

18

from these documents.


E.

19
20

Even if some of the Deposition Documents contain protectable


information, the Court should order that information redacted and
remove the confidential or AEO designations.

Even where the two-part test weigh[s] in favor of protecting the discovery material

21
22

* * *, a court must still consider whether redacting portions of the discovery material will

23

nevertheless allow disclosure. In re Roman Catholic Archbishop of Portland in Oregon,

24

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

23 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

confidential or AEO designations.

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
9
10

confidential and attorneys eyes only designations from the 10 Deposition Documents.
(Exs 1-10 to Wilson Decl.)

11

DATED this 13th day of January, 2016.

12

ELLEN ROSENBLUM
ATTORNEY GENERAL
FOR THE STATE OF OREGON

13
14

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

16
17
18
19
20

Special Assistant Attorneys General for


Plaintiffs

21
22
23
24
25
26

24 -

PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL


AND ATTORNEYS EYES ONLY DESIGNATIONS AND
MOTION TO ENFORCE THE AMENDED PROTECTIVE
ORDER

ATTORNEY GENERAL ELLEN ROSENBLUM


MARKOWITZ HERBOLD PC
SPECIAL ASSISTANT ATTORNEYS GENERAL
SUITE 3000 PACWEST CENTER
1211 SW FIFTH AVENUE
PORTLAND, OREGON 97204-3730
(503) 295-3085
Fax: (503) 323-9105

ATTORNEY CERTIFICATE OF SERVICE


I hereby certify that on January 13, 2016, I have made service of the foregoing
PLAINTIFFS MOTION TO REMOVE CONFIDENTIAL AND ATTORNEYS EYES
ONLY DESIGNATIONS AND MOTION TO ENFORCE THE AMENDED
PROTECTIVE ORDER on the party/ies listed below in the manner indicated

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
Hand Delivery
Overnight Courier
Email: blegaard@schwabe.com
jeden@schwabe.com
Via Odyssey eFile & Serve

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
Hand Delivery
Overnight Courier
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
Facsimile
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Email: rreznick@orrick.com
Via Odyssey eFile & Serve

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
Facsimile
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Email: PetranovichM@lanepowell.com
FrenchP@lanepowell.com
docketing-pdx@lanepowell.com
Via Odyssey eFile & Serve

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
Hand Delivery
Overnight Courier
Email: Edward.siskel@wilmerhale.com
Charles.speth@wilmerhale.com
Jamie.gorelick@wilmerhale.com
Matthew.haws@wilmerhale.com
Via Odyssey eFile & Serve

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.

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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.

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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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DATED this 13th day of January, 2016.

s/ Harry B. Wilson
_______________________________________
Harry B. Wilson, OSB No. 077214
Special Assistant Attorney General for
Plaintiffs

CERTIFICATE OF SERVICE