Stipulation,Agreement: SUNPOWER CORPORATION vs MARTIN DEBONO et al

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                                19CV349042
Santa Clara — Civil

Stephen H. Sutro (SBN 172168) electronically filed

by Superior Court of CA,
Suzanne R. Fogarty (SBN 154319)

Meghan C. Killian (SBN 310195) County of Santa Clara,
Duane Morris LLP on 10/16/2020 4:32 PM
One Market Plaza Reviewed By: R. Nguyen
Spear Tower, Suite 2200 Case #19CV349042

San Francisco, CA 94105 Envelope: 5126858

Tel: 415.957.3000

Fax: 415.957.3001

E-mail: SHSutro@DuaneMorris.com
SRFogarty@DuaneMorris.com
MCKillian@DuaneMorris.com

Brad Thompson (admitted pro hac vice)

Bert Greene (admitted pro hac vice)

Duane Morris LLP

Las Cimas IV

900 S. Capital of Texas Hwy., Suite 300

Austin, TX 78746-5435

Tel: 512.277.2300

Fax: 512.277.2301

E-mail: | BThompson@DuaneMorris.com
BGreene@DuaneMorris.com

Attorneys for Plaintiff,
SUNPOWER CORPORATION

SUPERIOR COURT OF THE STATE OF CALIFORNIA.
FOR THE COUNTY OF SANTA CLARA

SUNPOWER CORPORATION, Case No. 19CV349042
Plaintiff, PLAINTIFF SUNPOWER
CORPORATION’S REQUEST FOR
v. JUDICIAL NOTICE IN SUPPORT OF

PLAINTIFF’S MOTION TO COMPEL
MARTIN DEBONO, STANDARD INDUSTRIES DISCOVERY RESPONSES

INC., GAF ENERGY, and DOES 1-100,
Date: November 10, 2020
Defendants. Time: 9:00 a.m.

Dept.: 21

Judge: Thang N. Barrett

Trial Date: None set
Complaint filed: June 14, 2019

luyen

SUNPOWER’S REQUEST FOR JUDICIAL NOTICE ISO MOTION TO COMPEL,
CASE NO. 19CV349042I. SUNPOWER’S REQUEST FOR JUDICIAL NOTICE

Pursuant to California Evidence Code sections 451(a) and 452(d) and (h), SunPower
Corporation (“SunPower’”) submits the following Request for Judicial Notice in Support of its
Motion to Compel Discovery Responses set for hearing on November 10, 2020.

SunPower requests that the Court take judicial notice of Judge Sunil’s Kulkarni’s October 1,
2020 Order in, SunPower Corporation v. Standard Industries and GAF Energy LLC, Santa Clara
Superior Court, Case No. 20CV368636, finding SunPower’s trade secret designation complies with
California Code of Civil Procedure Section 2019.210 (“Section 2019.210”). Standard Industries Inc.

(“Standard”) and GAF Energy LLC (“GAF”) informed the Court that the trade secret designation in
that case is the “same” as the trade secret designation in this case.' Accordingly, given the overlap of
the designations, and the fact that Judge Kulkarni found as a matter of law that the designation
complied with California law, Judge Kulkarni’s Order is probative to this Court’s consideration of
SunPower’s trade secret designation.

Specifically, SunPower respectfully requests that the Court take judicial notice of the
following:

. October 1, 2020 Order Concerning Parties’ Petitions, Standard Industries and GAF
Energy LLC v. SunPower Corporation, Santa Clara Superior Court, Case No.
20CV368810, and SunPower Corporation v. Standard Industries and GAF Energy
LLC, Santa Clara Superior Court, Case No.20CV368636 (J. Kulkarni) (“October 1*
Order”) (A true and correct copy is attached hereto as Exhibit B.)

. Pages 10, 16, 23, 29 of Petitioners Standard Industries And GAF Energy LLC’s
Notice Of Petition And Petition To Vacate or Correct Discovery Order Of Arbitrator,
or In The Alternative, Motion For Protective Order; Memorandum Of Points And
Authorities In Support Thereof (PUBLIC REDACTED VERSION), Standard
Industries and GAF Energy LLC v. SunPower Corporation, Santa Clara Superior
Court, Case No. 20CV368810 (“Standard Petition”) (A true and correct copy is
attached hereto as Exhibit C.)

. Page 8 of Petitioners Standard Industries and GAF Energy LLC’s Reply In Support of
Petition And Petition To Vacate or Correct Discovery Order Of Arbitrator, or In The
Alternative, Motion For Protective Order (PUBLIC REDACTED VERSION),
Standard Industries and GAF Energy LLC v. SunPower Corporation, Santa Clara
Superior Court, Case No. 20CV368810 (“Standard Reply”) (A true and correct copy
is attached hereto as Exhibit D.)

. Page 3 of Respondent Standard Industries and GAF Energy LLC’s Opposition to
SunPower Corporation’s Petition To Confirm And Enforce Arbitration Order

' See Chart attached to this Request for Judicial Notice as Exhibit A.
SUNPOWER’S REQUEST FOR JUDICIAL NOTICE ISO MOTION TO COMPEL, CASE NO. 19CV349042(PUBLIC REDACTED VERSION), SunPower Corporation v. Standard Industries
and GAF Energy LLC, Santa Clara Superior Court, Case No. 20CV368636
(“Standard Opposition’) (A true and correct copy is attached hereto as Exhibit E.)

. Pages 23 to 24 of Transcript of September 17, 2020 Hearing on Standard Industries
and GAF Energy LLC’s Petition To Vacate or Correct Discovery Order Of
Arbitrator, or In The Alternative, Motion For Protective Order and SunPower
Corporation’s Petition To Confirm And Enforce Arbitration Order (“Sept. 17"
Hearing Tr.”) (A true and correct copy is attached hereto as Exhibit F.)

. Page 22 of Transcript of June 25, 2020 Hearing on SunPower’s Motion to Compel,
SunPower Corporation v. Gabriela Bunea, American Arbitration Association, Case
No. 01-19-0003-9663 (“June 25" Hearing Tr.”) (A true and correct copy is attached
hereto as Exhibit G.)

. Page 7 of Standard Industries and GAF Energy’s Opposition To SunPower
Corporation’s Motion To Compel Compliance With Subpoena (PUBLIC
REDACTED VERSION), SunPower Corporation v. Gabriela Bunea, American
Arbitration Association, Case No. 01-19-0003-9663 (“Standard Opposition to Motion
To Compel”) (A true and correct copy is attached hereto as Exhibit H.)

IL. FACTUAL BACKGROUND OF DOCUMENTS REQUESTED TO BE JUDICIALLY
NOTICED

On February 6, 2019, SunPower filed a lawsuit against its departed executive, Dr. Gabriella
Bunea, SunPower Corporation v. Gabriela Bunea, Santa Clara Superior Court, Case No.
19CV342228, based on allegations that Ms. Bunea misappropriated SunPower’s trade secret
information prior to departing SunPower. In April 2019, the parties stipulated to stay the litigation
pending in Santa Clara Superior Court in favor of arbitration as called for in Dr. Bunea’s agreement
with SunPower, SunPower Corporation v. Gabriela Bunea, American Arbitration Association, Case
No. 01-19-0003-9663 (“Bunea Arbitration”). On May 22, 2020, SunPower served subpoenas on Dr.
Bunea’s current employer, Standard Industries, Inc. and its subsidiary, GAF Energy LLC
(collectively, “Standard/GAF”)(“Subpoenas”). Standard/GAF objected to the Subpoenas on various
grounds, including that SunPower’s trade secret designation in that case did not comply with Section
2019.210. After receiving Standard/GAF’s objections to the Subpoenas, SunPower filed a Motion to
Compel Compliance with the Subpoena(s). On July 12, 2020, the Arbitration Tribunal (the
“Tribunal’”) entered an Order granting SunPower’s motion to compel stating, among other things,
that it had reviewed SunPower’s trade secret designation and “finds it to be reasonably particular and
specific such that all interested parties are on fair notice of SunPower’s claimed/asserted trade
secrets and that discovery should proceed.”

I
SUNPOWER’S REQUEST FOR JUDICIAL NOTICE ISO MOTION TO COMPEL, CASE NO. 19CV349042On July 22, 2020, SunPower filed a Petition to Confirm or Enforce the Arbitration Order,
SunPower Corporation v. Standard Industries and GAF Energy LLC, Santa Clara Superior Court,
Case No.20CV368636 (“SunPower Petition”). Subsequently, on July 28, 2020, Standard/GAF filed
a Petition to Vacate or Correct Discovery Order of Arbitrator, or in the Alternative, Motion for
Protective Order, Standard Industries and GAF Energy LLC v. SunPower Corporation, Santa Clara
Superior Court, Case No. 20CV368810 (“Standard Petition”).

In its Petition to Vacate and in various other pleadings filed with the Tribunal and with the
Santa Clara Superior Court, Standard/GAF argued that SunPower’s trade secret designation in the
Bunea Arbitration and SunPower’s trade secret designation in this case are “remarkably similar”
and follow the “same legally deficient style.” (Standard Petition, p. 23, § 2; Standard Opposition to
Motion to Compel, p. 7.) (emphasis added) On October 1, 2020, the Court granted SunPower’s
Petition, in large part, and denied Standard’s Petition, in large part. (See, Exhibit B, October 1, 2020

Order.) In regards to SunPower’s trade secret designation, the Court held:

The Court has reviewed SunPower’s trade secret designations in this arbitration (see
Kao Decl., Ex. G) and believes they satisfy the requirements of section 2019.210. The
designations provide fair notice to Standard, are reasonably particular, and frame the
proper scope of discovery. (See Advanced Modular Sputtering, Inc. v. Superior Court
(2005) 132 Cal.App.4th 826, 836-837.)

Standard complains that SunPower merely identified some documents, described some
categories of information in the documents, and “then states that certain information
contained within some subset of the document is trade secret information as well.”
(Standard Opp’n, at pp. 12-13.) But as long as trade secrets are identified with
reasonable particularity, it doesn’t matter if they are identified with reference to a
document or not. It’s the concept or idea that is the trade secret, not the document.
And SunPower’s designations identify with reasonable particularity the trade secrets
they claim are at issue (albeit with reference to documents).

(Ex. B, at p. 7-8) (emphasis added).
Ill. | THE COURT’S OCTOBER 1, 2020 ORDER AND STANDARD/GAF’S PLEADINGS
ARE RELEVANT, JUDICIALLY NOTICEABLE AND FORECLOSE

STANDARD/GAF’S ARGUMENT THAT SUNPOWER’S TRADE SECRET
DESIGNATION IS INSUFFICIENT

A The Court Has Authority to Take Judicial Notice Of The Requested Records.

Pursuant to Evidence Code section 452(d), a court may take judicial notice of the records of

any court of this state. The above-referenced Exhibits B-F are pleadings, transcripts and orders

4
SUNPOWER’S REQUEST FOR JUDICIAL NOTICE ISO MOTION TO COMPEL, CASE NO. 19CV349042maintained in the files and records of the Superior Court for the State of California. Furthermore, the
above-referenced Exhibits B-H are subject to judicial notice under section 452(h) of the Evidence
Code as “[f]acts and propositions that are not reasonably subject to dispute and are capable of
immediate and accurate determination by . . . sources of reasonably indisputable accuracy.” (Evid.
Code § 452(h).)

The above identified Court Order, pleadings, and transcripts are relevant to SunPower’s
pending Motion to Compel because the Tribunal and the Santa Clara Superior Court found that
SunPower’s trade secret designation in the Bunea Arbitration (“Bunea Designation’) satisfies the
requirements of Section 2019.210 and Standard/GAF themselves continuously argued the Bunea
Designation is essentially identical to SunPower’s Second Amended Trade Secret Disclosure
(“2AD”) in this action.

Moreover, Standard’s arguments against the Bunea Designation that were rejected by Judge
Kulkarni in his October 1, 2020 Order are the same arguments Standard/GAF currently assert
against the 2AD here.

B. This Court Held That SunPower’s “Remarkably Similar” Trade Secret
Designation Satisfies Section 2019.210.

In its briefing in the Bunea Action, Standard/GAF repeatedly drew comparisons between the
Bunea Designation and SunPower’s Designation in this action claiming they were “remarkably
similar” and follow the “same legally deficient style.” (Standard Petition, p. 23, | 2; Standard
Opposition to Motion to Compel, p. 7.)

Standard/GAF asserted this comparison was proper because “you have the same claimant
and the same counsel and the same style of trade secret designation.” (Sept. 17th Hearing Tr.;
23:25 — 24:5)(emphasis added).

On this basis, Standard/GAF urged the Tribunal to find the Bunea Designation insufficient,
noting “SunPower’s trade secret designations in the DeBono Action — which were prepared by
SunPower with the same legally deficient style that SunPower has attempted in this Arbitration, such

as identifying trade secrets by reference to documents and information categories --- were legally

oD
SUNPOWER’S REQUEST FOR JUDICIAL NOTICE ISO MOTION TO COMPEL, CASE NO. 19CV349042deficient and did not satisfy Section 2019.210.” (Standard Opposition to Motion to Compel, p. 7, §
1.) Standard/GAF reiterated the similarities between the designations stating, “SunPower is
designating trade secrets in this arbitration the way that they have repeatedly and unsuccessfully
tried to designate trade secrets in the Santa Clara Superior Court action.” (June 25" Hearing Tr.,
22:17-22.)

Following the Tribunal’s order granting the motion, Standard/GAF then petitioned the Santa
Clara County Superior Court to vacate the order arguing that “[d]espite the Tribunal’s Order,

SunPower’s strategy in its trade secret designation in the Bunea Arbitration is remarkably similar to

its problematic designation efforts in the DeBono Action.” (Standard Petition, p. 2, { 2.)

As such, Standard/GAF argued because “other judges of this Court rejected SunPower's trade
secret designations in the DeBuno[sic] Case, [...] the same result should occur here because

SunPower' s mode of identifying trade secrets in this arbitration is the same as in the DeBuno [sic]

Case.” (October 1st Order, 7:16-19)(emphasis added).

In the Order, the Court (Kulkarni, J.) held the Bunea Designation satisfied the requirements

under Section 2019. 210 because “[t]he designations provide fair notice to Standard, are reasonably

particular, and frame the proper scope of discovery satisfy the requirements of section 2019.210.”

(October 1* Order, 7:23-25.) (emphasis added)

The Court rejected Standard/GAF’s arguments that the designation was insufficient because
“SunPower merely identified some documents, described some categories of information in the
documents, and ‘then states that certain information contained within some subset of the document

is trade secret information as well.’" (/d., 8:2-8.) The Court held:

“as long as trade secrets are identified with reasonable particularity, it doesn't matter if
they are identified with reference to a document or not. It's the concept or idea that is
the trade secret, not_the document. And SunPower's designations identify with
reasonable particularity the trade secrets they claim are at issue (albeit with reference
to documents).” (/d., 8:2-8.) (emphasis added..)

SunPower respectfully submits that the DeBono Designation, which Standard/GAF

repeatedly asserted was identical in style to the approved Bunea Designation, complies with Section

6
SUNPOWER’S REQUEST FOR JUDICIAL NOTICE ISO MOTION TO COMPEL, CASE NO. 19CV3490422019.210 for the same reasons. (See Evid. Code § 350; § 451(a) (mandating notice of “[t]he
decisional . . . law of this state”).)
IV. CONCLUSION

For the reasons stated above, SunPower respectfully requests that the Court take judicial

notice of Exhibits B - H.

Dated: October 16 , 2020 DUANE MORRIS LLP

By:___/s/ Stephen H. Sutro
Stephen H. Sutro (SBN 172168)
Suzanne R. Fogarty (SBN 154319)
Meghan C. Killian (SBN 310195)
Brad Thompson (admitted pro hac vice)
Bert Greene (admitted pro hac vice)

Attorneys for Plaintiff,
SunPower Corporation

_
SUNPOWER’S REQUEST FOR JUDICIAL NOTICE ISO MOTION TO COMPEL, CASE NO. 19CV349042SunPower Corporation’s Request for Judicial Notice In Support of Motion to Compel

Ex. | Referenced Document Relevant Portion Authority
B October 1, 2020 Order 1. Trade Secret Designations Evid. Code
Concerning Parties’ §§ 451(a);
Petitions, Standard The Court has reviewed SunPower’s | 452(d), (h)
Industries and GAF trade secret designations in this arbitration
Energy LLC v. SunPower | (see Kao Decl. Ex. G) and believes they
Corporation, Santa Clara _| satisfy the requirements of section
Superior Court, Case No. 2019.210. The designations provide fair
20CV368810, and notice to Standard, are reasonably
SunPower Corporation v. particular, and frame the proper scope of
Standard Industries and discovery. (See Advanced Modular
GAF Energy LLC, Santa Sputtering, Inc. vy. Superior Court (2005)
Clara Superior Court, Case | 132 Cal.App.4th 826, 836-837.)
No.20CV 368636 .
Standard complains that SunPower
merely identified some documents,
described some categories of information in
the documents, and “then states that certain
information contained within some subset
of the document is trade secret information
as well.” (Standard Opp’n, at pp. 12-13.)
But as long as trade secrets are identified
with reasonable particularity, it doesn’t
matter if they are identified with
reference to adocument or not. It’s the
concept or idea that is the trade secret,
not the document. And SunPower’s
designations identify with reasonable
particularity the trade secrets they claim
are at issue (albeit with reference to
documents).
See Order, page 7:22-8.8. (emphasis added.)
C | Petitioners Standard In its Bunea Arbitration designation, Evid. Code

Industries And GAF
Energy LLC’s Notice Of
Petition And Petition To
Vacate or Correct
Discovery Order Of
Arbitrator, or In The
Alternative, Motion For
Protective Order;
Memorandum Of Points

each of SunPower’s nine purported
“trade secrets” suffers from these very
same deficiencies outlined by Judge
Barrett. For each, SunPower identifies a
particular document by name, summarily
labels the document itself a trade secret
compilation, then describes a generic
category or various generic categories of
information in the document, and then states

§ 452(d), (h)

DM1\11470802.1Ex.

Referenced Document

Relevant Portion

Authority

And Authorities In
Support Thereof (PUBLIC
REDACTED VERSION),
Standard Industries and
GAF Energy LLC vy.
SunPower Corporation,
Santa Clara Superior
Court, Case No.

20CV 368810

that certain information contained within
portions (e.g. slides or pages) is trade secret
information as well. (p. 10, 435)

[J

As explained in the following
memorandum, SunPower’s trade secret
designation in the Bunea Arbitration uses
the same “look in the documents, there are
generic categories of information in there,
various combinations of these documents +
information are trade secrets” approach that
is the opposite of particularity (and that has
already been rejected by Judges Williams,
Pierce and Barrett of this court). (p. 16 459)

[J

Despite the Tribunal’s Order, SunPower’s
strategy in its trade secret designation in
the Bunea Arbitration is remarkably
similar to its problematic designation
efforts in the De Bono Action. Just like
SunPower’s legally deficient trade secret
designation attempts in the DeBono Action,
the designation in the Bunea Arbitration has
not identified the alleged “trade secrets”
with sufficient particularity under Section
2019.210. Instead, it merely points to
various documents and then calls out broad
category descriptions of information
supposedly within the documents as
evidence of a “compilation trade secret,”
and further identifies individual “trade
secrets” by again only pointing to
documents using category descriptions. See
Ex. 10. (p. 23) (emphasis added.)

[J

Here, each of SunPower' s nine
purported "trade secrets" suffers from
the very same deficiencies identified by
Judge Barrett: for each, SunPower

DM1\11470802.1Ex. | Referenced Document Relevant Portion Authority
identifies a particular document by name,
calls it a trade secret compilation, describes
acategory or categories of information in
the document, and then states that certain
information contained within some of the
pages, slides, or other subsets of the
document is trade secret information as
well. (p. 29) (emphasis added.)

D Petitioners Standard And, as noted in the Petition, these are Evid. Code
Industries and GAF deficiencies that the Court found plagued § 452(d), (h)
Energy LLC’s Reply In SunPower’s designations in the DeBono
Support of Petition And Action as well. Pet. 21:25-22:18. (p. 8, fn. 7)

Petition To Vacate or (emphasis added.)
Correct Discovery Order
Of Arbitrator, or In The
Alternative, Motion For
Protective Order (PUBLIC
REDACTED VERSION),
Standard Industries and
GAF Energy LLC v.
SunPower Corporation,
Santa Clara Superior
Court, Case No.

20CV 368810

E Respondent Standard Despite the Arbitral Order, SunPower’s Evid. Code
Industries and GAF trade secret designation in the Bunea § 452(d), (h)
Energy LLC’s Opposition | Arbitration, like its deficient designation
to SunPower efforts in the DeBono action, does not
Corporation’s Petition To | identify the “trade secrets” with sufficient
Confirm And Enforce particularity. (p. 3)

Arbitration Order
(PUBLIC REDACTED
VERSION), SunPower
Corporation v. Standard
Industries and GAF
Energy LLC, Santa Clara
Superior Court, Case
No.20CV368636
F Transcript of September You really don't have to take my word for it. | Evid. Code

17, 2020 Hearing on
Standard Industries and
GAF Energy LLC’s

You can just compare that designation with
the prior

§ 452(d), (h)

DM1\11470802.1Ex. | Referenced Document Relevant Portion Authority
Petition To Vacate or writings of Judge Barrett, Judge Pierce, or
Correct Discovery Order | Judge
Of Arbitrator, or In The Williams, because you have the same
Alternative, Motion For claimant and the
Protective Order and same counsel and the same style oftrade
SunP ower Corporation’s secret
Petition To Confirm And | designation. (23:25 — 24:5) (emphasis
Enforce Arbitration Order | added.)

G Transcript of June 25, Neukom: But, yeah, SunPower is Evid. Code
2020 Hearing on designating trade secrets in this arbitration § 452(h)
SunPower’s Motion to the way that they have repeatedly and
Compel, SunPower unsuccessfully tried to designate trade
Corporation v. Gabriela _ | secrets in the Santa Clara Superior Court
Bunea, American action.- (22:17-22)

Arbitration Association,
Case No. 01-19-0003-
9663

H Standard Industries and Likewise, the Tribunal apparently was not Evid. Code

GAF Energy’s Opposition | previously made aware (as it should have § 452(h)

To Sunpower
Corporation’s Motion To
Compel Compliance With
Subpoena (PUBLIC
REDACTED VERSION),
SunPower Corporation v.
Gabriela Bunea,
American Arbitration
Association, Case No. 01-
19-0003-9663

been) by SunPower that three different
Superior Court judges in Santa Clara
County had made written findings that
SunPower’s trade secret designations in the
DeBono Action—which were prepared by
SunP ower with the same legally deficient
style that SunPower has attempted in this
Arbitration, such as identifying trade
secrets by reference to documents and
information categories—were legally
deficient and did not satisfy Section
2019.210. (p. 7) (emphasis added.)

DM1\11470802.1Nv

Decision on Submitted Matter | L -
SUPERIOR COURT OF THE STATE OF CALRJORNIA Dp

OCT - 1 2020
FOR THE COUNTY OF SANTA CLARA A
rt

euros: terk of the
SUNPOWER CORPORATION, Case No. 208¥368636 in Ba ca
Petitioner/Plaintiff, Sylvia T
, ORDER CONCERNING THE

PARTIES’ PETITIONS

v

Date: September 17, 2020

STANDARD INDUSTRIES INC.; GAF Time: 9 a.m.
ENERGY, Dept.: 8 .
Judge: Hon. Sunil R. Kulkarni
Respondents/Defendants. Petition Filed: July 22, 2020
GABRIELA BUNEA,

Real-Party-In-Interest.

STANDARD INDUSTRIES INC.; GAF Case No. 20CV368810
ENERGY,

Petitioners/Plaintiffs,

v. Date: September 17, 2020
Time: 9 a.m.
SUNPOWER CORPORATION, Tad Hon. Sunil R. Kulkarni
Respondent/Defendant. Petition Filed: July 28, 2020
GABRIELA BUNEA,

Real-Party- In-Interest.

The Court has before it two dueling petitions by the parties concerning an arbitration
tribunal’s order relating to nonparty discovery. One is by SunPower Corporation (“SunPower”)
seeking to confirm the order as issued; one is by Standard Industries Inc. / GAF Energy LLC
(collectively “Standard”) seeking to vacate or modify the order.

As explained below, the Court holds that the arbitration order is, for the most part, legally
and factually correct, but one modification to that order is required. The Court therefore GRANTS

IN LARGE PART SunPower’s petition and DENIES IN LARGE PART Standard’ petition.

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I BRIEF FACTUAL OVERVIEW!

A. Arbitration

SunPower Corporation (“SunPower”) and Standard are competitors in the field of rooftop
solar energy for residential and commercial customers. Dr. Gabriela Bunea was a high-ranking
employee in SunPower’s research and development department for over 15 years before moving to
Standard to become GAF Energy’s Senior Vice President for Research and Development.
Concerned that Dr. Bunca took SunPower trade secrets with her to Standard, SunPower filed a
lawsuit in this Court against Dr. Bunea in February 2019, alleging claims of, among other things,
trade secret misappropriation. SunPower obtained a temporary restraining order against Dr. Bunea
in February 2019 and a preliminary injunction against her in March 2019. (SunPower’s Request for
Judicial Notice, Case No. 20CV368636 (“RIN”), Exs. A, B.)?

Because the employment agreement between Dr. Bunea and SunPower had an arbitration
clause, Dr. Bunea insisted on arbitrating this dispute. Accordingly, and at the joint request of the
parties, the Court stayed the litigation in favor of an arbitration, SunPower then filed an initial
demand for arbitration with the American Arbitration Association (“AAA”) in November 2019, and
an amended petition in March 2020. (Sutro Deel., ff] 5-6.)

In the arbitration, SunPower alleges various claims, including actual and threatened trade
secret misappropriation, SunPower sought documents from Dr. Bunea relating to SunPower’s
claims of trade secret misappropriation. Dr. Bunea told SunPower and the arbitrator (hereinafter
“the Tribunal”) that she could not provide the requested documents because Standard, her employer,
owned and controlled the documents. SunPower then subpoenaed Standard. When Standard refused
to comply, SunPower asked the Tribunal for an order requiring Standard to comply with the
subpoenas.

SunPower, Dr. Bunea, and Standard then briefed various subpocna-related issues for the

! The Court GRANTS both of SunPower’s unopposed requests for judicial notice (one for each
petition) and GRANTS Standard’s unopposed requests for judicial notice (one for each petition).

? Unless otherwise stated, all evidentiary citations in this order will be to documents filed in Case
No. 20CV368636.Ce YW DA Hh BRB WN

Qa aD SH = Ss

18

Tribunal. After the Tribunal held lengthy hearings, it issued a written order on July 12, 2020.
(SunPower’s Petition, Ex. A.) In that order, the Tribunal modified the subpoenas, but ordered
Standard to provide certain documents (based on “hits” on specified search terms) on an “Attorney
Eyes Only” basis. The Tribunal also ordered that Standard would not review documents for
relevance before producing them to SunPower.

B. Proceedings in this Court

Standard did not agree to comply voluntarily with the Tribunal’s July 12, 2020 order.
SunPower therefore filed a petition in this Court on July 22 to enforce this order. For its part,
Standard filed its own petition in this Court about a week later, asking the Court to vacate or modify
the order. The parties stipulated to, and the Court ordered, relating the two petitions and setting a
joint briefing schedule for both petitions.

The Court held oral argument (by videoconference) on both petitions on September 17, with
a court reporter present. The Court took the two petitions under submission, and now issues its final
rulings.
Ill. DISCUSSION

A. The Parties’ Petitions Are Procedurally Proper.

The parties have properly “teed up” the relevant issues to the Court through their dueling

petitions. Granted, in Berglund v. Arthroscopic & Laser Surgery Center of San Diego, L.P. (2008)
44 Cal.4th 528 (Berglund), the non-party seeking to avoid an arbitrator’s discovery order filed a
motion for protective order in the trial court, instead of filing a petition to vacate the order. But
neither the Court of Appeal nor the California Supreme Court held that filing a protective order was
the only proper method to challenge an arbitrator’s discovery order. And neither side in our case has
argued that the other side’s petition is procedurally improper.

Therefore, the Court will consider the petitions. Since for the most part Standard’s petition is
the mirror image of SunPower’s petition (.e., SunPower wants the Court to confirm the Tribunal’s

discovery order, and Standard doesn’t), the Court generally will focus on SunPower’s petition unlessaD WwW fF WN

otherwise specified.?

B. Standard Waived Some, But Not, of Its Objections to the Subpoenas.

In Berglund, the California Supreme Court held that a non-party objecting to an arbitrator’s
discovery order must submit them “first to the arbitral, not the judicial forum.” (Berglund, supra, 44
Cal.4th at p. 535.) The Berglund court observed that “it is reasonable to infer that the Legislature
intended discovery disputes arising out of arbitration to be initially litigated before the arbitrator.”
(id. at p. 536.)

So what objections did Standard make to the Tribunal, thus preserving them here? As
summarized by the Tribunal, Standard argued: a) the stay of discovery in the “DeBuno Case”
precluded discovery here (more on the DeBuno Case later); b) SunPower cannot obtain more
discovery than what would be permitted by its trade secret designation in the DeBuno Case; c)
relevance; d) overbreadth; and e) undue burden. (Petition, Ex. A [7/12/20 discovery order], at pp.
pp. 9-11.) While the Tribunal rejected all of these arguments, they were preserved such that
Standard can assert them now.

But Standard did not argue to the Tribunal that it (the Tribunal) lacked power to order non-
party discovery in the first place—the very argument that takes pride of place in Standard’s briefing
to this Court. Standard could have raised that argument to the Tribunal, but, for whatever reason,
did not do so, Standard claims it didn’t have a chance to brief the issue, see Standard Opp’n at p. 9,
fn. 8, but does not explain how the Tribunal supposedly denied it that chance.*

Therefore, in the Courts view, Standard waived its “no power to order non-party discovery”

argument, but not its other arguments. But in the interest of completeness, the Court will analyze

that first argument anyway.

3 SunPower asks the Court to deny Standard’s petition as premature under Code of Civil Procedure
section 1288.4. (SunPower’s Petition, at p. 3.) Even if Standard’s first petition were premature, its
second petition was filed on July 28, 2020, which is well after the 10-day waiting period set forth
in section 1288.4. The Court therefore will consider Standard’s petition.

4 The Court is not relying on Standard’s partial production of documents as a waiver of its objections|
to produce documents related to supposed trade secrets, as the Court agrees that Standard’s
voluntary production to some discovery requests shows only a willingness to compromise on some
issues. It does not constitute a waiver.Oo ON DH Rh WH De

°

i

| arbitration, could seek discovery from Standard, a non-party to the arbitration, just as if the

B. The Tribunal Had Power to Issue Its Discovery Order.

The parties agree on the following three points. Firs, in the arbitration agreement between.
Dr. Buena and SunPower, the parties agreed to follow applicable AAA commercial arbitration rules,
and these AAA rules do not prohibit parties from seeking discovery from non-parties. Second, if

Code of Civil Procedure’ section 1283.05 were to apply in our case, SunPower, as a party in the

arbitration were a regular court case. (See Berglund, supra, 44 Cal.4th at p. 535.) Third, if section
1283.05 were not to apply, then SunPower could not get such discovery, as section 1283.05 is the
exclusive means in an arbitration for compelling discovery from non-parties.

But section 1283.05 applies “[ojnly if the parties by their agreement so provide.® (See
§ 1283.1, subd. (b).) This makes sense, since arbitration is a voluntary process, and the parties to the

arbitration generally can shape their arbitration as they jointly wish. Here, the parties dispute

whether SunPower and Dr. Buena ever agreed to discovery of non-parties: SunPower says yes,
Standard says no.

Standard makes much of the fact that the arbitration agreement does not specifically mention
discovery of non-parties. (See SunPower’s Petition, Ex. B, 9 5.a.) The Court agrees that standing
alone, the arbitration agreement does not affirmatively authorize such discovery. But parties are free

to alter the scope of an arbitration agreement after the arbitration has begun. (See Kelly Sutherlin v.

Schneickert (2011) 194 Cal.App.4th 519, 529.) And the alteration need not be express; the conduct

of the parties can show a mutual agreement to modify their contract (the arbitration agreement).
(See Daugherty Co. v. Kimberly-Clark Corp. (1971) 14 Cal App.3d 151, 158 [“An agreement to
modify a written contract will be implied if the conduct of the parties is inconsistent with the written
contract so as to warrant the conclusion that the parties intended to modify it.”].)

Here, Dr. Buena’s attorney sent a letter to the Tribunal in early February 2020, stating that

5 Unless otherwise stated, all future statutory references are to the Code of Civil Procedure.

© Ina personal injury or wrongful death arbitration, an arbitrator automatically has power to order

' discovery from non-parties. (See § 1283.1, subd. {a).) This arbitration, of course, does not

concern wrongful death or personal injury.oo Om ID

the arbitration agreement says nothing about non-party discovery. (Kao Decl., Ex. H.) But later, the
Tribunal, Dr. Buena, and SunPower spent much time in March, April, and May 2020 discussing the
issue of non-party discovery, specifically SunPower’s desire to obtain documents from Standard
because Dr. Buena would not or could not produce them. There is no evidence that during these
discussions, Dr. Buena ever objected to the Tribunal about SunPower serving subpoenas on
Standard. (See Fogarty Decl., Ex. 14 (Dr. Buena’s 4/17/20 letter] at pp. 25-26; Sutro Decl., Ex. 15
[4/20/20 Hrg. Trans.] at p. 24; Sutro Decl., Ex. 14 [5/8/20 Hrg. Trans.] at p. 8.) That’s exactly when
Dr. Buena should have told the Tribunal that she objected to non-party discovery because the
arbitration agreement did not permit it. Yet she stayed silent.

Standard argues that Dr. Buena was agreeing only to SunPower making an attempt to
convince Standard to comply voluntarily with the Tribunal’s discovery order, but not agreeing that
SunPower could get discovery from Standard. That is illogical and not supported by the record, Dr.
Buena had plenty of chances to object to the substance of the Tribunal’s order, but did not do so.
Her overall acquiescence signifies consent to the order.

The Court therefore finds that the parties agreed through their conduct that discovery from
SunPower to Standard, a non-party, could occur.” Section 1283.05 thus applies to this arbitration.
The Court will proceed to the merits of the dispute, confident that the Tribunal had power to order
this discovery.

Cc. The Court Will Review All Aspects of the Discovery Order De Novo.

In Berglund, the California Supreme Court held that section 1283.05 requires “full judicial
review of arbitrator discovery orders . . . because it preserves the legal rights of nonparties.”
(Berglund, supra, 14 Cal Ath at p. 538.) While the California Supreme Court did not specifically use
the words “de novo” in the opinion, it called for “thorough and exacting review of arbitrator
discovery orders against nonparties.” (dd. at p. 539.) The court reasoned that a deferential standard
would be inappropriate given that “arbitrators are not required to make decisions according to the
"This agreement distinguishes this case from Aixtron, Inc. v. Veeco Instruments, Inc, (2020) $2

Cal.App.Sth 360, where the party opposing non-party discovery in the arbitration never agreed to
non-party discovery.—

oOo Om DH BR WH ONY

tule of law.” (id. at p. 534.)

SunPower agrees that the Court should review legal questions de novo, but use an abuse of
discretion standard for factual determinations made by the Tribunal. But the cases cited by
SunPower relate to an appellate court reviewing a trial court’s discovery rulings. That is not the
right analytical framework for this case, given the Berglund court’s emphasis on protecting non-
parties from an arbitration process to which they did not consent.

In the Court’s view, the “thorough and exacting” review required by Berglund requires de
novo review of all issues presented: legal and factua!. The Court accordingly will review all aspects
of the Tribunal’s discovery order against a nonparty de novo.

E. The DeBuno Case does not Affect this Case.

Like Dr. Buena, Martin DeBuno was a high-ranking executive with SunPower who then
moved to Standard. Like Dr. Buena, SunPower believes that Mr. DeBuno misappropriated

SunPower trade secrets. And like Dr. Buena, SunPower took legal action against Mr. DeBuno. But

unlike Dr. Buena, SunPower is proceeding with litigation against him, as opposed to arbitration.
(See Kao Decl., Ex. B.)

Standard believes this “DeBuno Case” is relevant here for two main reasons: a) other judges
of this Court rejected SunPower’s trade secret designations in the DeBuno Case, and the same result

should occur here because SunPower’s mode of identifying trade secrets in this arbitration is the

| same as in the DeBuno Case; and b) because of supposed overlap between the two cases, SunPower

is using the Buena arbitration as an “end-run” to obtain discovery in the DeBuno Case.
As discussed below, the Court rejects both arguments.
iL Trade Secret Designations
The Court has revicwed SunPower’s trade secret designations in this arbitration (see Kao
Deci., Ex. G) and believes thcy satisfy the requirements of section 2019.210.3 The designations
provide fair notice to Standard, are reasonably particular, and frame the proper scope of discovery.

8 Whether or not the Tribunal plans to apply section 2019.210 in the arbitration, the Court believes

| that SunPower's subpoenas to Standard must satisfy this statute to be enforceable under section

1285.05.owe DN HH BRB WH YN

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(See Advanced Modular Sputtering, Inc. v. Superior Court (2005) 132 Cal.App.4th 826, 836-837.)

Standard complains that SunPower merely identified some documents, described some
categories of information in the documents, and “then states that certain information contained
within some subset of the document is trade secret information as well.” (Standard Opp’n, at pp. 12-
13.) But as long as trade secrets are identified with reasonable particularity, it doesn’t matter if they
are identified with reference to a document or not. It’s the concept or idea that is the trade secret, not
the document. And SunPower’s designations identify with reasonable particularity the trade secrets
they claim are at issue (albeit with reference to documents).

Standard then points to rulings made by other judges of this Court. But those rulings are ina
different case involving different trade secrets. Their relevance is limited.

2. End-Riun

The discovery SunPower seeks from Standard is relevant to this arbitration, as they generally
track SunPower’s trade secret designations. That this discovery may also be somewhat relevant to
the DeBuno Case doesn’t change its relevance to this arbitration. Standard has cited no authority

stating that a party violates a discovery stay in case A by obtaining discovery for case B that has

some overlap to case A, particularly when case B has a protective order restricting use of the
discovery.

in any event, the amount of overlap is relatively small. Granted, SunPower alleges in its

: complaint in the DeBuno Case that Standard and Dr. Buena conspired to misappropriate SunPower

trade secrets. (Kao Decl., Ex. B, §§ 69-72 and fh. 1.) And SunPower has propounded discovery in
the DeBuno Case relating to Dr. Buena’s alleged trade secret misappropriation. (Kao Decl., Ex. C,
Interr, Nos. 6-7.)

But Dr. Buena’s alleged role in the DeBuno Case is not large. And fundamentally, the two
actions (the arbitration and the DeBuno Case) deal with different trade secrets, as both Standard and
Dr. Buena admitted when opposing an attempt to relate cases. (RIN, Exs. D, E.) Different trade
secrets in each case mean little discovery overlap between the two cases.

Moreover, Standard provides no evidence from which the Court could infer SunPower is

acting in bad faith by seeking this arbitration-related discovery to evade the DeBuno Case’s

8discovery stay. And of course, given the protective order in the arbitration, SunPower can’t even use]
any documents obtained from Standard in the arbitration in the DeBuno Case.

In short, the Court rejects Standard’s “end-run” argument.

D. One Change to the Discovery Order is Necessary.

Standard has two other criticisms of the Discovery Order: a) the search terms are too broad
and cause “hits” on irrelevant documents; and b) the Tribunal required Standard to produce all
documents that were “hits” based on the search terms; in other words, Standard could not do a
relevance review before production. (See SunPower’s Petition, Ex. A, at pp. 13-14.)

The Court has reviewed? the search terms ordered by the Tribunal and agrees that they are
proper and generally designed to obtain relevant documents from Standard, in light of Standard’s

trade secret designations. That a search term may have a double meaning (¢.g., “IBC”), where only

one meaning is relevant in this case, doesn’t mean that the term is overbroad. Standard has not
shown taat any of the terms is unlikely to lead to relevant evidence.

But the Court does not believe that Standard must produce relevant documents before a
relevance review. Afier all, civil subpoenas for documents only require production of responsive,
relevant documents, and this arbitration subpoena should be treated the same way. Standard should
not have to produce completely irrelevant documents to SunPower.

‘Therefore, the Court endorses the search terms approved by the Tribunal, but will permit

Standard to do a relevance review of documents that have the search terms before producing those

) documents to SunPower.!°

IV, CONCLUSION
For the foregoing reasons, the Court GRANTS IN LARGE PART SunPower’s petition and

DENIES IN LARGE PARI Standard’s petition. The Tribunal’s discovery order is generally upheld,

° In performing this review, the Court is not giving any deference to the Tribunal, but rather is
reviewing the Tribunal’s work from scratch (i.e., from a de novo perspective).

10 Standard profiers an expert forensic analysis concerning certain requested documents, see
Standard’s Petition, at pp. 11-12, but the relevance of this analysis is unclear. Even if Standard
doesn't have certain documents identified by SunPower, it still may have other documents that are
relevant and must be produced.Co Oe ND HW &® BW HY &

ee a a a i ec
on A A FB NH = S

19

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except that Standard can, if it chooses, perform a relevance review before providing relevant
documents to SunPower.

As for further details concerning production of documents (e.g., timing, format, whether
SunPower needs to pay for Standard’s relevance review, whether these documents can be used at the
upcoming arbitration merits hearing, who (if anyone) at SunPower can see the produced documents,
and so on), the Court believes that the Tribunal is in a better position than the Court to determine
those issues. The Court directs the parties to jointly contact the Tribunal within five days of today to
discuss those issues.

IT IS SO ORDERED.

Date: [e | Ww

The Honorable Sunil R. Kulkarni
Judge of the Superior CourtSUPERIOR COURT OF CALIFORNIA
COUNTY OF SANTA CLARA - | L. E
DOWNTOWN COURTHOUSE p

191 NORTH FIRST STREET

San José, CALIFORNIA 95113 oct - 4 2020
CIVIL DIVISION

Stephen Holbrook Sutro

Duane Morris LLP

One Market Piaza Spear Tower #2200
San Francisco CA 94105

RE: SUNPOWER CORPORATION vs STANDARD INDUSTRIES, INC. et af
Case Number: 20CV368636

PROOF OF SERVICE

ORDER CONCERNING THE PARTIES" PETITIONS was delivered to the parties listed below the above entitled
case as set forth in the sworn declaration below.

If you, a party represented by you, or a witness to be called on behalf of that party need an accommodation under the American with
Disabilities Act, please contact the Court Administrator's office at (408) 862-2700, or use the Court's TDD line (408) 882-2690 or the
Voice/TDD California Relay Service (800) 735-2922.

DECLARATION OF SERVICE BY MAIL: | declare that | served this notice by enclosing a true copy in a sealed envelope, addressed to
each person whose name is shown below, and by depositing the envelope with postage fully prepaid, in the United States Mail at San Jose,
CA on October 01, 2020. CLERK OF THE COURT, by Asimina Theoharis, Deputy.

CW-9027 REV 12/08/16 PROOF OF SERVICESUPERIOR COURT OF CALIFORNIA
COUNTY OF SANTA CLARA
DOWNTOWN COURTHOUSE
19] NogTH First SiRsET
SAN Jost, CALIFORNIA 95113

CIVIL DIVISION oeinta Clara
BY. DEPUTY
RE: Standard Industries Inc. et af vs SunPower Corporation . 4,
Case Number, 20CV368810 Sylvia Theoharis
PROOF OF SERVICE

ORDER CONCERNING THE PARTIES' PETITIONS was delivered to the parties listed below the above entitled
case as set forth in the sworn declaration below.

If you, a party represented by you, or a witness to be called on behalf of that party need an accommodation under the American with
Disabilities Act, please contact the Court Administrator's office at (408) 882-2700, or use the Court's TDD line (408) 882-2690 or the

Voice/TDD California Relay Service (800) 735-2922.
DECLARATION OF SERVICE BY MAIL: | declare that | served this notice by enclosing a true copy in a sealed envelope, addressed to

each person whose name is shown below, and by depositing the envelope with postage fully prepaid, in the United States Mail at San Jose,
CA on October 01, 2020, CLERK OF THE COURT, by Asimina Theoharis, Deputy.

ec: Suzanne Ryder Fogarty 1 Market Spear Tower Ste 2200 San Francisco CA 94111-1127

John MeMakin Neukom Skadden Arps Slate Meagher & Flom LLP 525
University Ave Suite 1400 Palo Alto CA 94301

CW-9027 REV 12/08/16 PROOF OF SERVICECO WN KR mH Re De

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JOHN M. NEUKOM (SBN 275887) Electronically Filed

john.neukom@skadden.com by Superior Court of CA,
ABRAHAM A. TABAIE (SBN 260727) County of Santa Clara,
abraham.tabaie@skadden.com on 7/28/2020 8:01 PM
CAROLINE VAN NESS (SBN 281675) Reviewed By: R. Tien
caroline. vanness@skadden.com Case #20CV368810
MICHELLE KAO (SBN 322758) Envelope: 4674002

michelle.kao@skadden.com

SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
525 University Avenue, Suite 1400

Palo Alto, California 94301!

Telephone: (650) 470-4500

Facsimile: (650) 470-4570

RAZA RASHEED (SBN 306722)
raza.rasheed@skadden.com

SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
300 South Grand Avenue, Suite 3400

Los Angeles, California 90071-3144

Telephone: (213) 687-5000

Facsimile: (213) 687-5600

Attorneys for Petitioners
STANDARD INDUSTRIES INC. and GAF ENERGY LLC

SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF SANTA CLARA

STANDARD INDUSTRIES INC.; GAF CASE NO.; 20CV368810
ENERGY LLC,
(1) PETITIONERS STANDARD
Petitioncrs/Plaintifis, | INDUSTRIES’ AND GAF ENERGY’S
NOTICE OF PETITION AND PETITION
v. TO VACATE OR CORRECT DISCOVERY
ORDER OF ARBITRATOR, OR IN THE
SUNPOWER CORPORATION, ALTERNATIVE, MOTION FOR
PROTECTIVE ORDER;
Respondent/Defendant,
(2) MEMORANDUM OF POINTS AND
GABRIELA BUNEA, AUTHORITIES IN SUPPORT THEREOF;
and

Real Party in Interest.
(3) DECLARATIONS OF MICHELLE
KAO, DR. BRUCE V. HARTLEY, AND
MICHAEL VILLAREALE IN SUPPORT
THEREOF.

Date: To be Determined
Time: To be Determined

Dept.:
PUBLIC REDACTED VERSION Judge:

Petition Filed: July 21, 2020

STANDARD INDUSTRIES’ AND GAF ENERGY'S PETITION TO VACATE OR CORRECT DISCOVERY ORDERa aA Mw

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
PLEASE TAKE NOTICE that as soon as the maller may be heard in the courtroom of the
Santa Clara Courthouse,!' 161 North First Street, San Jose, CA 95113, Petitioners Standard Industries
Inc, and GAF Energy LLC (collectively, “Standard”) will, and hereby do, petition:
1 Under California Code of Civil Procedure Section 1286,2(a)(4) or 1286.6 for an order
vacating or correcting the July 12,2010 order (the “Arbitral Order”) of the Arbitration
Tribunal (Arbitrator Dana Welch) in SunPower Corp. v. Gabriela Bunea, AAA No.
O1-19-0003-9663 (the “Bunea Arbitration”). The Arbitral Order improperly directs
Standard (a non-party to the Bunea Arbitration) te comply with certain portions of two}
identical non-party subpoenas (the “Subpoenas”) served by Respondent SunPower

Corporation (‘SunPower”), the claimant in (he Bunea Arbitration. Or, in the alternative,

2, Under California Code of Civil Procedure Section 2031.060, for a protective order to}
protect against the production of documents called for by the Arbitral Order,” based on
five independent grounds.

The five reasons the Arbitral Order is in error are:

First, the Bunea Arbitration Tribunal does not have the authority to compel any discovery from
anon-party to the arbitration, such as Standard, under the terms of Respondent SunPower’s applicable}
arbitration agreement with Real Party in Interest Dr. Gabriela Bunea. See Aixtron, No. H045 126, 2020)
WL 4013981, at *22.

l Standard has not submitted a hearing date per the Court’s guidance regarding scheduling during

the COVID-19 crisis. Per the Court’s website, “[m]Jotions may be submitted without a hearing date,
Calendar clerks will be assigning the hearing date based on availability, once the motion is processed.”
See https://www.scscourt.org/general_info/news_media/covid19.shtml#civil.

2 The correct procedural vehicle for Standard to bring its opposition to the Arbitral Order is

somewhat unclear, procedu