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.