Nucap Indus. Inc. v. Robert Bosch LLC, et al., No. 15 C 2207, Slip Op. (N.D. Ill. Dec. 7, 2017) (Kim, Mag. J.). Judge Kim granted without prejudice defendants’ (collectively “Bosch”) motion for a protective order barring the deposition of Bosch GmbH’s Chairman, absent re-noticing and demonstrated need for the deposition. Plaintiff Nucap claimed that … Continue Reading
Lynk Labs, Inc. v. Juno Lighting LLC, No. 15 C 4833, Slip Op. (N.D. Ill. Oct. 21, 2016) (Rowland, Mag. J.). Judge Rowland granted in part defendants’ motion for a protective order preventing production of their Equity Purchase Agreement (“EPA”) pursuant to which defendant Juno Lighting’s parent Schneider Electric sold Juno to Acuity Brands Lighting. … Continue Reading
AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. June 19, 2012) (Darrah, J.). Judge Darrah denied defendants’ (collectively “SICO”) request to modify the Local Patent Rules standard protective order to include a prosecution bar. While a prosecution bar could be appropriate, SICO failed to provide the specific facts necessary … Continue Reading
AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. Jan. 19, 2012) (Darrah, J.). Judge Darrah denied defendant’s (collectively “SICO”) motion to amend the Local Patent Rule Appendix B protective order to include a prosecution bar – a limitation that any counsel with access to a category of its opponent’s … Continue Reading
Trading Techs., Int'l, Inc. v. BGC Partners, Inc., No. 10 C 715 (Consolidated Cases), Slip Op. (N.D. Ill. Apr. 22, 2011) (Schenkier, Mag. J.).
Judge Schenkier ruled upon various proposed modifications to the 2006 Protective Order in the twelve consolidated 2010 cases. Judge Moran entered the governing protective in 2005, and it has stood since with some revisions. The key rulings included:
The Court denied various proposals to limit plaintiff Trading Technologies' ("TT") in-house counsel Steve Borsand's access to technical documents. While there was some risk of inadvertent disclosure because Borsand is involved in strategic decisions as to the scope of patent protection, the risk was small compared to the harm TT would suffer if it lost Borsand, who had been active in these litigations since 2003.
The Court denied efforts to expand the scope of the patent prosecution bar, limiting counsel from prosecuting related patents for a year after the litigation ended. Defendants' proposed expansion would have limited counsel from prosecuting in completely unrelated areas of trading software technologies. And the current bar balanced protecting the parties against the livelihood of counsel well.
The Court denied to add an additional level of protection for source code or to add additional protections for source code. The Court characterized the proposed protections as "elaborate," "extensive" and "labyrinthian."
The Court held that co-defendants should produce their confidential information to each other. To do otherwise, would limit the value of the case consolidation. And it was unnecessary to limit production because the Protective Order provided sufficient protections for the co-defendants just as it did for information exchanged between TT and a defendant.
Parties were allowed to add additional in-house counsel to the Protective Order, so long as they met the same criteria that Borsand met for TT.
The Court modified the Protective Order to include a specific method for challenging confidentiality designations made pursuant to the Protective Order.
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Sullivan d/b/a Survivor v. Jamison, No. 06 C 5240, Slip Op. (N.D. Ill. Dec. 21, 2010) (Mason, J.).
Judge Mason ruled upon the parties' cross motions regarding a Protective Order in this trademark and copyright case involving the band Survivor, of Eye of the Tiger fame. The Court held that third parties, and former Survivor members, could be given access to confidential documents used in conjunction with their respective testimony at deposition, hearings or trial. They were not, however, permitted access to attorney's eyes only documents.
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Chamberlain Group v. The Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Jul. 13, 2010) (St. Eve, J.).
Judge St. Eve granted in part plaintiff Chamberlain's Fed. R. Civ. P. 26(c)(1) motion for a protective order in this patent case involving garage door opening systems. The Court denied a protective order as to defendant Lear's request for Chamberlain's financial information. While Chamberlain claimed the sales information was not relevant because Chamberlain did not seek lost profit damages, Chamberlain's interrogatory response said it did seek lost profit damages. Additionally, the financial information was relevant as it was reasonably calculated to lead to admissible evidence related to Chamberlain's commercial success and its lost profits.
The Court granted a protective order as to discovery related to Chamberlain's new garage-door-opening algorithm. Chamberlain had not sold a product embodying the algorithm. So, it was irrelevant to a reasonable royalty calculation which looked to a hypothetical negotiation when infringement began. Furthermore, the algorithm was not relevant to an obviousness analysis. Finally, Chamberlain's decision to produce more information related to the same algorithm did not make the algorithm relevant.
The Court also entered a protective order preventing further deposition of a Chamberlain employee. The employee had already been deposed twice - once for two hours and once for a full day. To the extent Lear wanted to depose the employee about the new algorithm, the Court had already determined it was irrelevant. And despite repeated warnings to stop, Lear had already repeatedly questioned the employee about the algorithm.
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Trading Techs. Int'l, Inc. v. eSpeed, Inc., No. 04 C 5312, 1079, 4088, 4120, 4811 & 5164, Slip Op. (N.D. Ill. May 23, 2008) (Moran, Sen. J.).*
Judge Moran granted plaintiff Trading Technologies' ("TT") motion for a protective order, but denied its request for its fees related to the motion. TT used two videos of third part Walter Brumfield's trading screen and a portion of one of Brumfield's daily trading records (collectively the "Evidence") as evidence during the Court's inequitable conduct bench trial. Despite having been previously designated "Attorneys' Eyes Only" pursuant to a protective order and having been sealed in the parties' previous filings, the Evidence was presented in open court without any protections. Additionally, it was designated on exhibit lists submitted in connection with the bench trial without any confidentiality designation.
The first business day after the bench trial, TT contacted defendant eSpeed to confirm that the Evidence was to be treated as confidential. But eSpeed, and the other defendants in the related cases, objected arguing that by using the Evidence at trial without any protections or designations, TT waived confidentiality.
The Court acknowledged a "strong presumption of public access to court proceedings and records . . . ." But noting that the presumption is not absolute and that the parties seeking disclosure here were defendants not the press or public, the Court held that the Evidence retained its confidential status for the following reasons:
* The videos showing Brumfield's custom-designed computer screen configuration was a trade secret and its disclosure could harm Brumfield's competitive trading advantage;
* TT's public disclosure of the Evidence was inadvertent as evidenced by the numerous times the Evidence was previously treated as confidential; and
* To the extent the Court relied on the Evidence in its opinion (click here to read the Blog's post about the opinion), it did not do so in sufficient technical detail to disclose the confidential elements of the Evidence.
Additionally, the Court noted that while Brumfield's attorney did receive copies of the exhibit list showing the Evidence without confidentiality designations and TT had periodically represented Brumfield's interest throughout the case, neither Brumfield nor his counsel were in attendance to object when the Evidence was used during the bench trial. The Court does not specifically say whether or how these facts played into its decision. But the facts were included in the Court's description of the facts and, therefore, the Court appears to have considered them relevant.
* Click here to read much more about this case in the Blog's archives and click here for this opinion.
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Trading Techs. Int'l, Inc. v. eSpeed, Inc., No. 04 C 5312, Min. Order (N.D. Ill. Feb. 20, 2008) (Moran, Sen. J.).*
I have received several emails asking about the status of this case and, specifically, when the inequitable conduct portion of the case will be decided. The post-trial inequitable conduct briefing appears to be complete -- if you want to read the briefs, they are largely available on Pacer. So, unless the Court asks for further briefing or an additional hearing either of which seem unlikely, the Court will consider the evidence and the parties' post-trial papers, and then write an opinion deciding the inequitable conduct issues. There is not any way to accurately predict when the opinion will issue. The timing is governed by numerous factors, including the complexity of the case and the size of the Court's current docket.
Additionally, the parties have filed other motions which the Court will also have to decide. For example, Trading Technologies ("TT") filed a motion for a protective order sealing certain evidence that was produced as "Highly Confidential," but which was put into evidence and used without immediate restriction or objection, as to confidentiality, during the public trial. I will keep you updated as the Court issues any decisions regarding inequitable conduct or any other issues in the case.
* Click here to read much more about this case in the Blog's archives.
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Degregorio v. Phillips Electronics. N. Am. Corp., No. 07 C 2683, Slip Op. (N.D. Ill. Dec. 28, 2007) (Cox, Mag. J.).
Judge Cox granted in part defendants' motion for a protective order regarding plaintiff's subpoenas of defendants' customers in this patent dispute. Plaintiff subpoenaed defendants' customers of allegedly infringing hair trimmers with built in vacuums, seeking sales and inventory information, as well as promotional materials and purchase orders. The Court denied the motion as to the sales and inventory information. The customers' sales were potentially relevant to commercial success of the patented device for plaintiff's non-obviousness case. The Court did enter a protective order as to the request for purchase orders and marketing materials. The Court held that the purchase orders were cumulative of the other requested sales information and marketing materials were too tangential to commercial success to be discoverable.
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Faruki v. Eagle Seven, No. 06 C 7125, Min. Order (N.D. Ill. Aug. 10, 2007) (Mason, J.).
Magistrate Judge Mason denied plaintiffs' motion for a protective order to prevent a third party deposition. Plaintiffs argued that the third party's only knowledge relevant to the case was outside the relevant time frame. But the Court did not reach the merits of the motion because plaintiffs filed their motion two business days prior to the deposition. The motion was filed so close to the date of the deposition that the motion was noticed for the day after the deposition was set to be taken. Plaintiffs were aware of the subpoena and the deposition date for at least two weeks prior to filing their motion and the parties appeared before the Court during that time, but plaintiffs failed to raise the issue. The Court, therefore, denied the motion as untimely.
Practice tip: Deposition scheduling issues are often negotiated until very near the planned date, but if you think you might bring the issues before the Court make sure to warn the Court if you are appear while you are aware of the issue and, if at all possible, file your motion with sufficient time to notice your motion before the deposition is scheduled.
* The minute order is available here.
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Trading Techs. Int'l., Inc. v. eSpeed, Inc., No 04 C 5312, 2007 WL 1628352 (N.D. Ill. Mar. 1, 2007) (Moran, Sen. J.).
Judge Moran denied plaintiff Trading Technologies' ("TT") motion for a protective order to prevent the deposition of Robert Klinger, related to defendant eSpeed's inequitable conduct defense (more on this case in the Blog's archives). The Court held that discovery is a "balancing act." eSpeed's assertion that Klinger was involved in drafting a response to a USPTO Office Action at the center of its inequitable conduct claim outweighed TT's best argument -- that the deposition was duplicative because defendants had deposed or have scheduled the depositions of two lead outside patent prosecutors, TT's in-house patent prosecutor and the relevant patent examiner. The Court also noted that the case is approaching the discovery close, so we may start seeing fewer discovery motions in the case and more substantive motions.
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Autotech Techs. Ltd. Partnership v. Automationdirect.com, Inc. 237 F.RD. 405 (N.D. Ill. 2006). (Cole, Mag. J.). In this impressively detailed opinion, Magistrate Judge Cole grants defendant’s motion for a protective order limiting plaintiff’s in-house counsel’s access to sensitive customer information and communications. The parties faced a common problem, they had agreed that customer information, including … Continue Reading