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denying defendant's prosecution bar that would prevent the plaintiff's attorneys from prosecuting new patents for the plaintiff for a period of two years based on insufficient facts
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Civil Action No. 05-3006.
January 6, 2006.
MEMORANDUM
Defendant Snyder's of Hanover Manufacturing, Inc., ("Synder's") filed for a protective order pursuant to Fed.R.Civ.P. 26(c) seeking, among other things, an order preventing the plaintiff's attorneys litigating this case from prosecuting new patents for the plaintiff regarding similar art. Both Snyder's and the plaintiff, AFP Advanced Foods Products ("AFP") agree on the necessity of a protective order generally, but disagree over two specific provisions.
I. BACKGROUND of CASE
AFP brings this patent infringement case seeking a temporary injunction against Snyder's. AFP avers that Snyder's is willfully infringing upon their valid patent (#6,873,675 filed on May 17, 2005 and named "Acidified Imitation Cheese Sauce and Pudding Compositions and Method for Producing Such Compositions") through its production and sale of "Eatsmart Salsa Con Queso." Snyder's counterclaims requesting a declaratory judgment that the AFP patent ("675") is invalid and unenforceable.
II. STANDARD for PROTECTIVE ORDERS
"Under Federal Rule of Civil Procedure 26(c), a court "for good cause shown" may, in certain circumstances, enter a protective order in the context of discovery." Shingara v. Skiles, 420 F.3d 301, 305-06 (3d Cir. 2005). Fed.R.Civ.P. 26(c) places the burden of persuasion on the party seeking the protective order to prove the good cause. Cipollone v. Ligget Group, 785 F.2d 1108, 1114 (3d Cir. 1986). The party seeking the protective order must show that disclosure of the information sought to be protected would result in a "clearly defined, specific and serious injury."Shingara at 306 (citing Pansy v. Borough of Stroudsburg, 23 F.3d 772, 786-87 (3d Cir. 1994)). "Broad allegations of harm are not specific to establish good cause." Id. Generally a Court will balance the interests of seven, non-exclusive, factors before issuing a protective order. Id. Those factors include:
1) whether disclosure will violate any privacy interests;
2) whether the information is being sought for a legitimate purpose or for an improper purpose;
3) whether disclosure of the information will cause a party embarrassment;
4) whether confidentiality is being sought over information important to public health and safety;
5) whether the sharing of information among litigants will promote fairness and efficiency;
6) whether a party benefitting from the order of confidentiality is a public entity or official; and
7) whether the case involves issues important to the public.Id. (citing Glenmede Trust Co. v. Thompson, 56 F.3d 476, 483 (3d Cir. 1995), and Pansy, 23 F.3d 787-91).
III. DISCUSSION
A. Contested Language
The language at issue in this motion for protective order appears in section 1. (f) and section 3. of Snyder's proposed order. Under section 1. (f) Snyder's defines "CONFIDENTIAL-ATTORNEY'S EYES ONLY" as "personnel information or sensitive CONFIDENTIAL information that the Designating Party in good faith believes will harm its competitive position if the information becomes known to a party other that the Designating Party." (Underlines added to highlight the contested language.) While section 3 states:
Information designated "CONFIDENTIAL-ATTORNEYS' EYES ONLY" may only be used for purposes of this litigation, and may only be disclosed to persons falling within the categories specified in Paragraphs 2(a), (b), (c) and (d)(ii)-(vi) of this Order, who are not currently engaged and shall not engage during the course of this litigation and for a period of two (2) years following final disposition of this litigation (whether by judgment including exhaustion of all appeals, settlement, or otherwise) in the preparation or prosecution of patent application(s) related to low protein containing products, including but not limited to, cheese dips, including direct supervision or assistance thereof, on behalf of any party or any of their corporate parents, predecessors in interest, successors in interest, subsidiaries, joint ventures, affiliates, or any other entities partially or wholly under their control or ownership, and only in accordance with the procedures established under this court.
The remaining language in the proposed order is uncontested by the parties. B. Should the Two-Year Ban be Granted?
Through its motion for protective order, Snyder's is seeking to prevent AFP's attorneys from using information they will acquire during discovery of this case in their subsequent legal practice. Snyder's is not alleging any ethical violations of established rules of confidentiality, but is worried about the inadvertent use of discovered material. AFP argues that the entire underlined language in section three (3) should be stricken.
Many courts have addressed similar issues. See Mikohn Gaming Corp. v. Acres Gaming, Inc., 50 U.S.P.Q.2d 1783 (D. Nev. 1998),Interactive Coupon Marketing Group, Inc. v. H.O.T.! Coupons, LLC, 1999 U.S. Dist. LEXIS 12437, No. 98 C 7408, 1999 WL 618969, at *2 (N.D. Ill. Aug. 9, 1999), Motorola, Inc. v, Interdigital Technology Corp., No. 03-488-LON, 1994 U.S. Dist. LEXIS 20714 (D. Del. Dec. 19, 1994), Commissariat A L'Energie Atomique v. Dell Computer Corp., 2004 U.S. Dist. LEXIS 12782 (D. Del. May 25, 2004), In re Papst Licensing, 2000 U.S. Dist. LEXIS 6374, *11 (E.D. La. May 4, 2000), and Chan v. Intuit, Inc., 218 F.R.D. 659 (N.D. Ca. 2003). None of their decisions is precedential nor has any applied the Third Circuit's standard for issuing a protective order in Shingara.
The threat of inadvertently using information obtained through discovery is not to be taken lightly.
Inadvertence, like the thief-in-the-night, is no respecter of its victims. Inadvertent or accidental disclosure may or may not be predictable. To the extent that it may be predicted, and cannot be adequately forestalled in the design of a protective order, it may be a factor in the access decision.U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984) (deciding whether in-house patent attorneys should be given access to confidential information through discovery in patent infringement cases). However, that threat, standing alone, under Shingara and U.S. Steel, is not enough to justify a protective order barring AFP's attorneys from prosecuting similar patents for two years. As further explained in U.S. Steel, the decision to deny access to discovered materials shall be done on a case-by-case, and lawyer-by-lawyer basis. Id. In this case, there is no reason for the court to believe that AFP's attorneys will not strictly follow the adopted order and refrain from using, either inadvertently or intentionally, Confidential Attorney's Eyes Only information for the sole purpose of this litigation. Barring AFP's attorneys from prosecuting similar patents for two years following this suit, without some tangible reason or good cause other than the general threat of inadvertent misuse of discovered materials, is the exact type of overly broad and generalized fear rejected in Shingara, U.S. Steel, andIn re Sibia Neurosciences, Inc., Doc. No. 525, 1997 U.S. App. Lexis 31828 (Fed. Cir. Oct. 22, 1997) (unpublished). If, however, the misuse of discovered material becomes an issue during the course of this litigation, the protective order, pursuant to section 17, may be amended accordingly. C. Should the Language in Section 1. (f) be Altered?
To the extent that it remains pertinent after this Court's ruling on the language above, I will adopt Snyder's original language regarding section 1. (f). The language suggested by AFP, "it or its employees or agents" instead of Snyder's proposed "its competitive position," appears overly broad. Limiting the distinction to the Designating Parties' competitive position, at this point in the litigation, is more in line with Snyder's showing of good cause that its competitive position is what's at stake, not the more broad "it or its employees or agents."
IV. CONCLUSION
Based upon the Third Circuit's strict requirement on the moving party to show good cause before a protective order is issued, and given that the basis of Snyder's perceived threat is the possible inadvertent use of information, I believe the two-year ban is burdensome and unnecessary. At this point in the litigation, there is no reason for the Court to believe that the information sought through discovery is for anything other than the specific and legitimate purpose of litigating this case. An appropriate order adopting Snyder's proposed protective order without the two-year ban follows.
ORDER
AND NOW, this day of January, 2006, upon consideration of the defendant's motion for a protective order (Docket # 14) and the plaintiff's objections (Docket # 16), it is hereby ORDERED that the motion is granted in part and denied in part. The request for a protective order is granted; AFP's objections are granted as well and portions of Snyder's of Hanover's proposed protective order will be removed. The protective order approved by the Court will be ordered today as a separate docket entry.PROTECTIVE ORDER:
1. Definitions:
(a) "Discovery Material" means any and all documents, testimony, deposition transcripts, deposition exhibits, interrogatory responses, admissions, and any other information produced or otherwise provided by a party or non-party to another party or non-party in connection with discovery in this litigation.
(b) "Designating Party" means any person or entity, whether a party to this lawsuit or not, who has designated documents or information as either "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY" under this Order.
(c) "Producing Party" means any person or entity, whether a party to this lawsuit or not, who has produced documents or provided information in this litigation or from whom documents or information have been requested.
(d) "Receiving Party" means any party who has received documents or information in this litigation.
(e) "CONFIDENTIAL" information means information that the Producing Party in good faith believes to be "confidential research, development, or commercial information" within the meaning of Fed.R.Civ.P. 26(c), including, but not limited to, financial information, security measures, nonpublic technical information, ongoing research and development projects, unpublished patent applications and file wrappers, patent license agreements, or other non-public information.
(f) "CONFIDENTIAL — ATTORNEYS' EYES ONLY" information means personnel information or sensitive CONFIDENTIAL information that the Designating Party in good faith believes will harm its competitive position if the information becomes known to a party other than the Designating Party.
(g) "Confidential Discovery Material" means any Discovery Material that is designated as "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY," in accordance with the procedures set forth below, including but not limited to:
(i) Information furnished pursuant to Rule 26 of the Federal Rules of Civil Procedure.
(ii) Information furnished or set forth in response to any discovery request made under Fed.R.Civ.P. 31, 33, or 36, provided that, prior to disclosure to the Receiving Party, the information or responses are plainly marked or otherwise identified by the Designating Party on each page as "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY."
(iii) Information set forth in documents made available for inspection by the Producing Party voluntarily or under Fed.R.Civ.P. 33(d) or 34 and that are identified at the time of inspection as containing or comprising "Confidential Discovery Material." The party producing information for inspection need not designate the information by stamping or labeling it as "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY" until copies are delivered to the inspecting party in response to the inspecting party requesting copies of the information. Making documents and things available for inspection shall not constitute a waiver of any claim of confidentiality, attorney-client privilege, or work-product immunity.
(iv) Information set forth in any copies of documents produced to the discovering party voluntarily or under Fed.R.Civ.P. 33(d) or 34, provided that, prior to delivery of the copies to the Receiving Party, the copies are physically or digitally marked, as feasible, by the Designating Party as "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY." Each page, unit, or thing should be individually marked with the appropriate designation, as feasible.
(v) Information revealed by inspection of things or premises voluntarily or under Fed.R.Civ.P. 34, provided that, prior to the inspection, the party permitting inspection states in writing that its Confidential Discovery Material will be disclosed by the inspection and specifies in writing those parts of the things or those areas of the premises in which its "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY" information will be revealed.
(vi) Information revealed during deposition upon oral examination under Fed.R.Civ.P. 30 or pursuant to subpoena under Fed.R.Civ.P. 45, except that the information revealed during any particular deposition shall cease to be Confidential Discovery Material fifteen days after the deposition transcript is received by all parties (unless at the deposition or before the ten day period has expired, the witness, his employer, or his counsel states on the record at the deposition, or gives written notice before the ten day period expires that "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY" information of the witness or his employer is set forth in the transcript). In the case of non-party witnesses, either a party or the non-party witness may designate information revealed as its "CONFIDENTIAL" or
"CONFIDENTIAL — ATTORNEYS' EYES ONLY" information within fifteen days after the deposition transcript is received by all parties.
(vii) Any summary, digest, analysis, or comment on any Confidential Discovery Material identified in categories (i)-(vi) that is not immune from discovery due to attorney-client privilege or work product immunity.
(h) Confidential Discovery Material shall not include any information that:
(i) is or becomes publicly available without the Receiving Party's breach of any obligation owed to the Designating Party;
(ii) is lawfully in the possession of a party receiving such information without any confidentiality obligations at the time of disclosure; or
(iii) is lawfully disclosed by a third party that is not subject to any confidentiality obligations at the time of disclosure.
2. Confidential Discovery Material designated "CONFIDENTIAL" may only be disclosed to the persons falling within the categories specified in Paragraphs 2(a), (b), (c), and (d) below:
(a) the Court and Court personnel involved with this case under seal as mandated by the Court's Local Rules;
(b) the parties' respective outside counsel of record in this action, including counsel's legal support staff and outside copying and graphics services as reasonably necessary to perform such services under the supervision of outside counsel of record;
(c) outside stenographic court reporters and language translators (including support staff as reasonably necessary); and
(d) the additional individuals listed in categories (i) through (vi) immediately below, provided such additional individuals — except for those in category (iii) with respect to the Confidential Discovery Materials identified in category (iii) — have read this Protective Order in advance of disclosure and signed an Undertaking in the form attached as Exhibit A, which shall be retained in the files of outside counsel with whom the additional individual is associated:
(i) A total of two persons who may be an officer of, director of, or inhouse counsel to, each party, to the extent necessary to assist in the conduct of this litigation, and who are specifically designated by written notice to the other party identifying each such person by name and position;
(ii) any person retained by a party or its counsel of record as an independent consultant or testifying expert for purposes of this action who has no continuing relationship, other than as an expert or consultant, with any of the parties hereto or their affiliates, or any of their competitors, and retained in accordance with the provisions set forth in Paragraph 5 below;
(iii) a deponent or other witness who is named as an author or recipient of, has previously seen the contents of, or has at any time been authorized to see the document or thing marked as Confidential Discovery Material that is to be disclosed to them;
(iv) paralegals, stenographic and clerical employees, and translators associated with the individuals enumerated in (d)(i)-(iii) above, but only as part of a disclosure to said individuals in accordance with this Protective Order;
(v) any person retained by a party to supervise the destruction of Confidential Discovery Material per Paragraph 14 below under the supervision of a party's outside counsel of record; and
(vi) such other individuals as the parties may agree to in writing or in a transcribed record.
(e) Any disclosure of "Confidential Discovery Material" to an individual listed in items (d)(i) through (iv) under Paragraph 2 above shall be limited to the information, documents and/or things that outside counsel believes are reasonably required for such individual to assist in this litigation.
3. Information designated "CONFIDENTIAL — ATTORNEYS' EYES ONLY" may only be used for purposes of this litigation, and may only be disclosed to persons falling within the categories specified in Paragraphs 2(a), (b), (c), and (d)(ii)-(vi) of this Order.
4. Counsel shall exert their best efforts to identify materials or information protected by the attorney-client privilege, the work product doctrine, and/or any other privilege, before its disclosure. The inadvertent production of any document or thing by any Producing Party shall be without prejudice to any claim by the Producing Party that such material is protected by the attorney-client privilege, or protected from discovery as work product. No Producing Party shall be held to have waived any rights thereunder merely by inadvertent production made subsequent to the execution of this Order. If, within a reasonable time after materials are disclosed, a Producing Party asserts that such materials are protected by the attorney-client privilege, work product doctrine, or any other claim of privilege, and were inadvertently produced, the Receiving Party shall take immediate steps to ensure that all known copies of such material are returned promptly to the Producing Party. The cost, if any, for excising such materials by the Receiving Party shall be borne by the Producing Party. Any party may thereafter contest such claims of privilege or work product as if the materials had not been produced, but shall not assert that a waiver occurred as a result of the production if the Producing Party has complied with the provisions of this paragraph.
5. Prior to showing any Confidential Discovery Material of the Designating Party to any of the individuals identified in Paragraph 2(d)(i) and 2(d)(ii) above, the party proposing the disclosure shall serve on the Designating Party: (i) a written notice identifying such individual and stating such individual's present occupation, employer and position, and all other business affiliations for the past 10 years, (ii) the most up-to-date copy of such individual's curriculum vitae, and (iii) an Undertaking in the form attached hereto as Exhibit A executed by such individual. The Designating Party shall have ten (10) calendar days to object to the disclosure of its Confidential Discovery Material to such individual. If at the end of the 10-calendar-day period no written objection has been received by the party that wishes to disclose the information, then the individual may receive copies of such Confidential Discovery Material upon compliance with all applicable provisions of this Protective Order. Such an objection, however, shall stay disclosure to the proposed recipient. If the Designating Party and party proposing disclosure are unable to resolve a disagreement, the party proposing to make the disclosure may thereupon seek leave of the Court to make the disclosure, notwithstanding the objection, by a noticed motion.
6. Any information designated as Confidential Discovery Material may not be offered into evidence at trial or any other proceeding unless the Designating Party is given reasonable notice and an opportunity to object and to seek a protective order. For the purposes of trial, designation of information in the pre-trial order shall be considered sufficient notice to a party with respect to the information referenced therein.
7. Counsel shall exert their best efforts to identify Confidential Discovery Material. The inadvertent designation, misdesignation, or non-designation of any document or thing by any party or non-party shall be without prejudice to any claim the party or non-party has to preserve the confidentiality of inadvertently disclosed information. Provided that efforts to retrieve inadvertently designated documents are commenced within a reasonable period of time after their production, no Producing Party shall be held to have waived any rights thereunder by inadvertent disclosure. If within a reasonable time after materials are disclosed, a Producing Party asserts that such materials should be designated as "CONFIDENTIAL" or "CONFIDENTIAL — ATTORNEYS' EYES ONLY," and were inadvertently produced with a different designation, the Receiving Party shall take immediate steps to ensure that all known copies of such material are appropriately disclosed according to the provisions of this Order. The cost, if any, for redesignating such materials by the Receiving Party shall be borne by the Producing Party.
8. This Protective Order shall not prevent any party from moving this Court for an order dedesignating or re-designating Confidential Discovery Materials. The information shall remain Confidential Discovery Material and under the status given by the Designating Party unless and until the Court rules to the contrary. It shall be the burden of the Designating Party to prove that its designation is appropriate. Further, a Receiving Party is not obligated to challenge the propriety of a designation as Confidential Discovery Material at the time of the designation.
9. In the event of any accidental or inadvertent disclosure of Confidential Discovery Material other than in a manner authorized by this Protective Order, counsel for any party who knows or becomes aware of such disclosure shall immediately notify counsel for the Designating Party of all of the pertinent facts, and make every effort to prevent further unauthorized disclosure, including retrieving all copies of any Confidential Discovery Material a party has improperly disclosed from the recipient(s) thereof and securing the agreement of the recipients in writing not to further disseminate the Confidential Discovery Material in any form.
10. Each recipient of any Confidential Discovery Material produced in this litigation hereby agrees to be subject to the jurisdiction of this Court for the purposes of the implementation and enforcement of this Protective Order.
11. Confidential Discovery Material shall not be used or disclosed by any recipient for any purpose other than in connection with the above-captioned action and shall not be disclosed by the recipient to anyone other than those persons as designated in the appropriate section of Paragraphs 2 and 3 herein, unless and until the restrictions herein are removed by order of the Court or by written stipulation of the parties and Designating Party, subject to the approval of the Court.
12. Nothing herein shall bar or restrict any attorney from rendering advice to his or her client regarding this litigation and, in the course thereof, relying upon his or her examination of Confidential Discovery Material, provided, however, that in rendering such advice and in otherwise communicating with his or her client, the attorney shall not disclose the content of any Confidential Discovery Material to anyone not authorized to receive such information in accordance with this Protective Order.
13. This Protective Order shall not be deemed a waiver of:
(a) any party's right to object to any discovery requests on any grounds;
(b) any party's right to seek an order compelling discovery with respect to any discovery request; (c) any party's right in any proceeding in this litigation to object to the admission of any evidence on any ground;
(d) any party's right to use and disclose its own documents and its own Confidential Discovery Material in its sole and complete discretion; or
(e) the status of any information as a trade secret or other confidential information.
14. This Protective Order shall be valid throughout the course of this litigation (defined to include all proceedings herein, appeals, and/or remands) and shall survive the termination of this litigation. Within one hundred twenty (120) days of the final non-appealable termination of this litigation, all documents and copies of documents (including any copies created by optical scanning) produced by the parties or by nonparties designated as containing Confidential Discovery Material shall be returned to the Designating Party or destroyed, except that counsel for each party may retain a copy of any documents containing Confidential Discovery Material in this case, which shall be kept confidential in accordance with this Order. If destroyed pursuant to this provision, the person or persons who destroy such Confidential Discovery Material shall provide written certification to the Designating Party that such information has been properly destroyed. Notwithstanding the terms of this Paragraph 14, but subject to the terms of Paragraph 11, the parties to this Order shall be under no obligation to delete Confidential Discovery Material from securely stored backup media. The terms of this Protective Order shall survive and remain in full force after the termination of this lawsuit and the Court shall have jurisdiction over the parties, their attorneys, and all persons to whom Confidential Discovery Material has been disclosed for the purpose of enforcing the terms of this Protective Order and/or redressing any violation thereof.
15. The terms of this Protective Order may be applied to the documents, information and things received by any party from a non-party, at the election of either the party or the non-party.
16. Counsel for the parties to whom Confidential Discovery Material has been furnished shall be responsible for restricting disclosure in accordance with the provisions of this Protective Order and for securing execution of and retaining the Undertaking attached as Exhibit A as and when required under the provisions of this Protective Order.
17. This Protective Order may be modified or amended either by agreement of the parties or by further order of the Court Upon good cause shown.