Auburn University v. International Business Machines, Corp.

Filing 114

MEMORANDUM OPINION AND ORDER that IBM show cause in writing on or before 10/6/2010, as to why the Final Infringement Contentions should be filed under seal, as further set out in order. Signed by Hon. Chief Judge Mark E. Fuller on 10/4/2010. (wcl, )

-WC Auburn University v. International Business Machines, Corp.

Doc. 114

IN THE UNITED STATES DISTRICT COURT F O R THE MIDDLE DISTRICT OF ALABAMA E A S T E R N DIVISION A U B U R N UNIVERSITY, P la in tif f , v. IN T E R N A T IO N A L BUSINESS M A C H IN E S CORP., D e f e n d a n t. ) ) ) ) ) ) ) ) ) )

C A S E NO. 3:09-cv-694-MEF (W O )

M E M O R A N D U M OPINION AND ORDER T h is cause is before the Court on IBM's Unopposed Motion for Leave to File E x h ib it Under Seal, (Doc. # 113), filed on September 30, 2010 by Defendant In te rn a tio n a l Business Machines Corp. ("IBM"). FACTS AND PROCEDURAL HISTORY O n July 23, 2009, Plaintiff Auburn University ("Auburn") filed this suit alleging in f rin g e m e n t of two of its patents as well as conversion and unjust enrichment. (Doc. # 1 ). After the conversion and unjust enrichment claims were dismissed, Auburn filed its F irs t Amended Complaint for Correction of Inventorship and Patent Infringement on July 1 7 , 2010. (Doc. # 87). O n January 1, 2010, the parties filed a Joint Motion for a Protective Order. (Doc. # 67). One day later, the Court entered a Protective Order. (Doc. # 68). Under this P ro te c tiv e Order, the parties were permitted to designate discovery material as

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"CONFIDENTIAL" or "HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES O N L Y ." Id. at 2, ¶ 3. These designations meant that the party receiving the discovery m a te ria l could use it "solely for the purposes of the preparation and trial" of this case. Id. A party can use the "CONFIDENTIAL" designation for discovery material "which that p a rty, in good faith, deems to be confidential in nature and that (a) is not publicly known a n d that the [p]arty would not normally reveal to third parties or, if disclosed would re q u ire such third parties to maintain in confidence, or that (b) comprises or contains in f o rm a tio n that the party claims in good faith to constitute or relate to sensitive nonp u b lic proprietary information, such as trade secrets or other confidential research, d e v e lo p m e n t, or commercial information." Id. at 3, ¶ 6. The "HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES ONLY" d e s ig n a tio n can be used only for discovery material that satisfies the requirements of the " C O N F ID E N T IA L " designation. Id. Furthermore, such discovery material must " c o n ta in [ ] or disclose[] information relating to, referencing, or pertaining to highly s e n s itiv e or proprietary technical, financial, business or personal information, the im p ro p e r use or disclosure of which would likely do harm to the [p]roducing [p]arty's b u s in e s s , employees, or other persons, which may include but is not limited to, c o n f id e n tia l customer lists, trade secrets relating to current or future products, and nonp u b lic documents concerning pending patent applications." Id. at 3­4, ¶ 6. O n June 6, 2010, this Court entered a Scheduling Order, which required, in part, th a t Auburn disclose its final asserted claims and infringement contentions by August 6,

2010. (Doc. # 91, at 1). After receiving disclosure of Auburn's Final Infringement C o n te n tio n s and finding it insufficient, IBM filed a Motion for Order Directing Auburn to P ro v id e Adequate and Complete Final Infringement Contentions In Compliance with the C o u rt's Scheduling Order on September 30, 2010. (Doc. # 110). To establish the in s u f f ic ie n c y of Auburn's disclosure, IBM seeks to introduce the disclosed Final In f rin g e m e n t Contentions in toto. (Doc. # 113, at 2). Because the Final Infringement C o n te n tio n s contains claim charts which cite and quote discovery material that IBM has d e s ig n a te d "CONFIDENTIAL" and "HIGHLY CONFIDENTIAL-OUTSIDE A T T O R N E Y S ' EYES ONLY," IBM asks this Court for leave to file this material under s e a l. Id. II. DISCUSSION A federal court's authority to seal or otherwise prevent public access to documents o r proceedings is derived from Rule 26(c) of the Federal Rules of Civil Procedure. See F e d . R. Civ. P. 26(c); see also In re Estate of Martin Luther King, Jr., Inc., v. CBS, Inc., 1 8 4 F. Supp. 2d 1353, 1362 (N.D. Ga. 2002). In relevant part, Rule 26(c) provides: P ro te c tiv e Orders. Upon motion by a party or by the person f ro m whom discovery is sought . . . for good cause shown, the c o u rt . . . may make any order which justice requires to p ro te c t a party or person from annoyance, embarrassment, o p p re s s io n , or undue burden or expense, including one or m o re of the following: .... (6 ) that a deposition, after being sealed, be opened only by o rd e r of the court; (7 ) that a trade secret or other confidential research, d e v e lo p m e n t, or commercial information not be revealed or b e revealed only in a designated way; and

(8) that the parties simultaneously file specified documents or in f o rm a tio n enclosed in sealed envelopes to be opened as d ire c te d by the court. F e d . R. Civ. P. 26(c) (emphasis added). While parties often stipulate to a protective order d e s ig n a tin g particular documents as confidential, such a stipulation only "postpones the n e c e s s a ry showing of `good cause' required for entry of a protective order until the c o n f id e n tia l designation is challenged." Chicago Tribune Co. v. Bridgestone/Firestone, In c ., 263 F.3d 1304, 1307 (11th Cir. 2001) (citing In re Alexander Grant & Co. Litig., 8 2 0 F.2d 352, 356 (11th Cir. 1987)). E v e n when no third party challenges a motion to seal, however, the Court must s till ensure that the motion is supported by good cause. See Estate of Martin Luther King, J r ., 184 F. Supp. 2d at 1363. "The judge is the primary representative of the public in te re s t in the judicial process and is duty-bound therefore to review any request to seal th e record (or part of it). He may not rubber stamp a stipulation to seal the record." Citizens First Nat'l Bank of Princeton v. Cincinnati Ins. Co., 178 F.3d 943, 945 (7th Cir. 1 9 9 9 ) (internal citation omitted). " O n c e a matter is brought before a court for resolution, it is no longer solely the p a rtie s ' case, but also the public's case." Brown v. Advantage Eng'g, Inc., 960 F.2d 1 0 1 3 , 1016 (11th Cir. 1992). There is a limited First Amendment right of access to civil tria l proceedings. See Chicago Tribune, 263 F.3d at 1310. In addition, the public has a

common-law right to inspect and copy judicial records,1 although the right is not absolute. S e e Nixon v. Warner Comms., Inc., 435 U.S. 589, 597-98 (1978). Absent a showing that th e interests of non-disclosure outweigh the public's common law right of access, courts o f te n deny even joint motions to seal in civil cases. See, e.g., Baxter Int'l, Inc. v. Abbott L a b s ., 297 F.3d 544 (7th Cir. 2002) (denying joint motion to maintain certain documents u n d e r seal); Jaufre ex rel. Jaufre v. Taylor, 351 F. Supp. 2d 514 (E.D. La. 2005) (denying jo in t motion to seal court record); Stamp v. Overnite Transp. Co., No. Civ. A. 96-2320G T V , 1998 WL 229538 (D. Kan. Apr. 10, 1998) (denying joint motion to seal court record). A n a lys is of whether materials submitted in conjunction with the motions in this c a s e are subject to either the common-law right of access or the First Amendment right of a c c e s s requires the Court to assess whether the proponent of sealing the documents has s a tis f ie d the "good cause" showing required by Federal Rule of Civil Procedure 26(c). See, e.g., Chicago Tribune, 263 F.3d at 1310-15; Estate of Martin Luther King, Jr., 184 F. S u p p . 2d at 1365-67. This analysis requires the Court to (1) determine whether valid g ro u n d s for the issuance of a protective order have been presented; and (2) balance the p u b lic 's interest in access against the litigant's interest in confidentiality. Estate of M a r tin Luther King, Jr., 184 F. Supp. 2d at 1366. IBM has failed to present the Court w ith sufficient grounds for sealing the documents pursuant to Federal Rule of Civil

While discovery materials are not generally subject to the common-law right of access, discovery materials filed as part of a dispositive motion are "judicial records" subject to the common-law right of access. See, e.g., Chicago Tribune, 263 F.3d at 1312; Estate of Martin Luther King, Jr., 184 F. Supp. 2d at 1365. Obviously, briefs filed in support of or in opposition to dispositive motions are also "judicial records" subject to the common-law right of access.

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Procedure 26(c). Therefore, in light of the foregoing authorities, it is hereby ORDERED th a t: IB M show cause in writing on or before October 6, 2010, as to why the Final In f rin g e m e n t Contentions should be filed under seal. IBM's submission in response to th is Order should cite legal precedent and make specific arguments as to why that p re c e d e n t supports his position with respect to filing the exhibit under seal. D O N E this the 4 day of October, 2010.
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/s/ Mark E. Fuller CHIEF UNITED STATES DISTRICT JUDGE