VasoNova, Inc. v. Grunwald et al

Filing 126

ORDER RE: PROTECTIVE ORDER re 124 Joint Discovery Letter Brief re Proposed Protected Order filed by VasoNova, Inc. Signed by Judge Jon S. Tigar on May 7, 2013. (wsn, COURT STAFF) (Filed on 5/7/2013)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

VASONOVA, INC.,

Case No. 12-cv-02422-JST

Plaintiff,
8
v.

ORDER RE: PROTECTIVE ORDER

9
10

SORIN GRUNWALD, et al.,

Re: ECF No. 124

Defendants.

United States District Court
Northern District of California

11
12
13

Now before the court is the parties’ Joint Letter Brief Regarding Discovery Order. ECF

14

No. 124. Having considered the arguments contained therein, and good cause appearing, the court

15

now orders as follows:

16

1.

The court will not adopt VasoNova and the Teleflex Entities’ suggested paragraph

17

in Section 7.1 of the parties' Protective Order, which would prohibit any party receiving Protected

18

Material from sharing that material with any other party, absent written permission from the

19

Producing Party. There are three reasons for the court's conclusion. First, while there

20

(surprisingly) appears to be no authority directly on point, the court concludes that all parties are

21

presumptively entitled to the discovery produced by all other parties. Second, the Protective Order

22

should be adequate to allay VasoNova and the Teleflex Entities' concerns regarding the use that

23

Bard might put their information. Third, in the very unlikely event that Bard's potential receipt of

24

a particular document poses problems that the protective order does not solve, the court would

25

prefer to litigate the issues pertaining to that document, rather than prohibit Bard from receiving an

26

entire category of documents.

27
28

2.

The court will adopt the prosecution bar proposed by VasoNova and the Teleflex

Entities. The Federal Circuit recently addressed the standard that lower courts should apply in

1

determining when an unacceptable risk of inadvertent disclosure of highly confidential

2

information arises. In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1381 (Fed. Cir.

3

2010). The Deutsche Bank court said:

4

[A] party seeking imposition of a patent prosecution bar must show that the
information designated to trigger the bar, the scope of activities prohibited by the
bar, the duration of the bar, and the subject matter covered by the bar reasonably
reflect the risk presented by the disclosure of proprietary competitive information.
We further hold that the party seeking an exemption from a patent prosecution bar
must show on a counsel-by-counsel basis: (1) that counsel's representation of the
client in matters before the PTO does not and is not likely to implicate competitive
decisionmaking related to the subject matter of the litigation so as to give rise to a
risk of inadvertent use of confidential information learned in litigation, and (2) that
the potential injury to the moving party from restrictions imposed on its choice of
litigation and prosecution counsel outweighs the potential injury to the opposing
party caused by such inadvertent use.

5
6
7
8
9
10

United States District Court
Northern District of California

11
12

Id. at 1381.
Here, VasoNova and the Teleflex Entities have made an initial showing that their proposed

13
prosecution bar is appropriate both in scope and duration. On the other hand, Romedex and
14

Grunwald have not shown, or even argued, that their expert’s1 “representation of the client in

15
matters before the PTO does not and is not likely to implicate competitive decisionmaking related
16
to the subject matter of the litigation.” Instead, Romedex and Grunwald merely argue that the
17
protective order used in a prior arbitration between the parties did not contain a prosecution bar.
18
This argument is not persuasive.
19
In short, the court will adopt Bard, Romedex, and Grunwald's position as to the disputed
20
portion of Paragraph 7.1 of the parties' Protective Order, but it will adopt VasoNova and the
21
Teleflex Entities' proposed prosecution bar.
22
IT IS SO ORDERED.
23
Dated: May 7, 2013
24
______________________________________
JON S. TIGAR
United States District Judge

25
26
27
1

28

Although Deutsche Bank's language reflects the fact that a prosecution bar often applies to
counsel for a party, in this case it will apply to an expert witness.
2