Protective Orders

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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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Continue Reading Trading Technologies: Court Maintains Existing Protective Order

Sloan Valve Co. v. Zurn Indus., No. 10 C 204, Slip Op. (N.D. Ill. Mar. 8, 2011) (St. Eve, J.).
Judge St. Eve granted plaintiff Sloan’s motion to lift the stay pending reexam of the patent-in-suit to modify the Protective Order. The Patent office required production of all information material to patentability, even if it is subject to a Protective Order. MPEP 724. But the Protective Order was silent as to whether Sloan could provide the Patent Office with confidential information.
The Court noted case law holding that MPEP 724 could not override district court orders. Telecomm. Sys., Inc. v. Mobile 365, Inc., No. 06 C 485, 2009 WL 594 3235 (E.D. Va. Mar. 31, 2009). As a result, the proper method for a patentee was exactly what Sloan did – seek a modification to the governing Protective Order.
So, the Court modified the Protective Order to allow disclosure to the Patent Office, so long as MPEP 724.02 procedures for maintaining documents as confidential.
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Continue Reading Protective Order Amended to Allow Disclosure of Confidential Information in a Reexam

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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Continue Reading Inventor/Plaintiff’s Managing Director Not Given Highly Confidential Technical Information

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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Continue Reading Contract Terms are Not Trade Secret

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, 2006 WL 1994541 (N.D. Ill. July 13, 2006) (Moran, J.).

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.Continue Reading Multi-Tiered Protective Orders & Attorneys Respecting Their Obligations