Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

McDavid Knee Guard, Inc. v. Nike USA, Inc., No. 08 C 6584, Slip Op. (N.D. Ill. Jun. 9, 2009) (Mason, Mag. J.).

Judge Mason denied plaintiffs' motion to disclose defendant's highly confidential technical information to plaintiff Stirling Mouldings' Managing Director ("MD") in this patent case.  Stirling argued that MD, who was also the patent-in-suit's inventor, was a necessary technical expert based upon his extensive experience with the technology.  Nike countered that Stirling had already hired other expert witnesses who had been able to provide technical opinions and that, if granted access to Nike's supplier's alleged trade secret process, MD would not be able to compartmentalize the information and avoid using it in competitive decision-making.  Nike also argued that Stirling was precluded from seeking access to the information for MD because he was specifically excluded from seeing Highly Confidential materials in the Protective Order and because the parties expressly agreed that information from a site visit was to be maintained as Highly Confidential and only show to plaintiffs' counsel. 

The Court held that Stirling was not precluded by prior agreements or orders from seeking access for MD.  But the Court also held that plaintiffs had not met their burden of showing good cause to modify the Protective Order granting MD access to Highly Confidential documents.  First, plaintiffs had already hired outside experts that had provided competent technical opinions and none of those experts had submitted a declaration stating they needed MD's expertise to render an opinion.  Furthermore, Nike showed that disclosing its supplier's technical information to MD would likely cause competitive harm.  It would be impossible for him to fully segregate the technical knowledge he would gain when performing his strategic decision-making role for Stirling.  The Court noted, however, that it did not determine whether the process at issue was, in fact, a trade secret.

Finally, the Court noted that it did not consider plaintiffs' arguments that MD would necessarily hear the technical information during the trial.  The Magistrate Judge did not have jurisdiction over the District Judge's decision of whether to seal the courtroom for trial when technical information is discussed.

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Am. Hardware Manufs. Assoc. v. Reed Elsevier Inc., No. 03 C 9421, 2007 WL 1521185 (N.D. Ill. May 14, 2007) (Moran, J.).

Judge Moran denied in part plaintiff's motion to strike defendants' confidentiality designations regarding the deposition of defendants' former CEO.  Defendants designated as "Highly Confidential," among other portions of the deposition, those portions in which one of defendants' customer contracts (the "Contract") was discussed.  Defendants argued that the terms of the Contract were trade secrets and, therefore, should be given the strongest confidentiality protection available pursuant to the parties' Protective Order.  Magistrate Judge Mason previously reviewed the designation, held that the Contract was not likely trade secret and reduced the related designations to "Confidential."  Judge Moran agreed with Judge Mason, rejecting the argument that the Contract was a trade secret as "conclusory and vague."  And Judge Moran agreed that the Contract warranted a "Confidential" designation.  Judge Moran also explained that while the deposition and related documents would be protected by the Protective Order during discovery, they would not when the Court ruled on dispositive motion or held trial, quoting the Seventh Circuit:

"Secrecy is fine at the discovery stage, before the material enters the judicial record" those documents that "influence or underpin the judicial decision are open to public inspection unless they meet the definition of trade secrets or other categories of bona fide long-term confidentiality."  Baxter Int'l, Inc. v. Abbott Labs., 297 F.3d 544, 545 (7th Cir. 2002).  Thus, at the summary judgment, trial or appellate stage, documents that have previously been deemed confidential may not retain such a designation.  See Little v. Mitsubishi Motor Mfg. of Am. Inc., 2006 WL 1554317, at *3 (C.D. Ill. 2006).

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Ruling on several motions for protective orders, Judge Moran provided insight into the increasing use of multi-tiered confidentiality designations. Before the Court were numerous cases that originated before different judges, all involving Trading Technologies International, Inc. as either Plaintiff or Defendant-Counterclaimant. Before consolidation, differing protective orders were entered in several of the cases. Some of the orders provided for relatively simple two-tier designations ("CONFIDENTIAL" and "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY"), but others provided an additional designation for documents related to patent prosecution which were even more limited than the Highly Confidential documents. Documents with this designation were to be restricted to outside counsel, as well as a limited number of identified inside counsel and business persons who are not directly or substantially involved in the party's patent prosecution activities.

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