Jabil, Inc. v. Essentium, Inc.
Filing
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ORDER granting in part and denying in part 1 Motion to Quash. Signed by Magistrate Judge Sean P. Flynn on 5/6/2021. (Flynn, Sean)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
JABIL, INC.,
Plaintiff,
v.
CASE No. 8:21-mc-39-KKM-SPF
CASE No. 8:21-mc-56-KKM-SPF
CASE No. 8:21-mc-57-KKM-SPF
CASE No. 8:21-mc-58-KKM-SPF
CASE No. 8:21-mc-62-KKM-SPF 1
ESSENTIUM, INC.,
Defendant.
____________________________________/
ORDER
As part of its discovery efforts in the underlying action, Jabil, Inc. v. Essentium, Inc.,
et al., case no. 8:19-cv-1567-KKM-SPF, Defendant Essentium subpoenaed documents
pursuant to Rule 45 from several non-parties including Milacron, LLC; Hewlett-Packard,
Co.; 3D Systems Corporation; Xerox, Corporation; and Desktop Metal, Inc. (hereinafter
“the Non-Parties”). See Case No. 8:21-mc-39-KKM-SPF (Doc. 1-4, Subpoena to Produce
Documents from Milacron, LLC); Case No. 8:21-mc-56-KKM-SPF (Doc. 1-3, Subpoena
to Produce Documents from Hewlett-Packard, Co.); Case No. 8:21-mc-57-KKM-SPF
(Doc. 1-4, Subpoena to Produce Documents from 3D Systems Corp.); Case No. 8:21-mc58-KKM-SPF (Doc. 1-3, Subpoena to Produce Documents from Xerox, Corp.); and Case
These cases were transferred to this Court from the Southern District of Ohio, Eastern
Division; the Southern District of Florida; the Northern District of Florida; the Northern
District of Florida; and the District of Massachusetts, Western Division, respectively
pursuant to Fed.R.Civ.P. 45(f).
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No. 8:21-mc-62-KKM-SPF (Doc. 1-3, Subpoena to Produce Documents from Desktop
Metal, Inc.). Before the Court are Plaintiff Jabil, Inc.’s motions to quash Defendant
Essentium, Inc.’s subpoenas to the Non-Parties, and Defendant Essentium, Inc.’s
responses in opposition (Case No. 8:21-mc-39-KKM-SPF (Docs. 1, 18); Case No. 8:21mc-56-KKM-SPF (Docs. 1, 13)); Case No. 8:21-mc-57-KKM-SPF, Docs. 1, 7); Case No.
8:21-mc-58-KKM-SPF (Docs. 1, 5); Case No. 8:21-mc-62-KKM-SPF (Docs. 1, 12)). 2
Discussion
In the motions to quash, Jabil asserts a need to protect its confidential and
proprietary information in the possession of the Non-Parties. “[O]rdinarily a party has no
standing to seek to quash a subpoena issued to someone who is not a party to the action,”
except when the objecting party claims some personal right or privilege with regard to the
documents sought.” Quillet v. Jain, case no. 6:12-cv-1283-Orl-28TBS, 2014 WL 1918046
(M.D. Fla. 2014) (quoting 9A Charles Alan Wright, Arthur R. Miller, Mary K. Kane, and
Richard L. Marcus, Federal Practice and Procedure § 2459 (3d ed. 2012)). Rule 45
contemplates quashing a subpoena that calls for disclosure of a trade secret or confidential
business information. Rail Trusts Locomotive Leasing, LLC v. SunCoke Energy, Inc., 2016 WL
8929072, at *2 (M.D. Fla. 2016); Rule 45(d)(3). Because Jabil asserts a need to protect its
confidential and proprietary information from disclosure, the Court finds Jabil has
standing to seek to quash the subpoenas.
In addition, with leave of Court, Jabil filed replies in Case Nos. 8:21-mc-39-KKMSPF, 8:21-mc-57-KKM-SPF, 8:21-mc-58-KKM-SPF, and 8:21-mc-62-KKM-SPF.
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The Court turns to Jabil’s contentions in support of its motions to quash. It is wellsettled that the scope of discovery under a Rule 45 subpoena is the same as that permitted
under Rule 26. Meide v. Pulse Evolution Corp., case no. 3:19-cv-1037-J-34MCR, 2019 WL
1518959 (M.D. Fla. 2019). In the underlying action, the parties’ entered into a stipulated
supplemental protective order governing discovery (“Stipulated Protective Order” (Doc.
64)). Essentium asserts that the Stipulated Protective Order, which requires third parties
to produce documents responsive to subpoenas simultaneously to both Jabil and
Essentium, sets forth the way in which the Non-Parties must comply with the subpoenas.
In addition to the Stipulated Protective Order, however, the Court entered an order
limiting the scope of discovery regarding Jabil’s proprietary Roadrunner program “to the
TenX technology and parts that are incorporated into the Roadrunner program.” See
Order, case no. 19-cv-1567-KKM-SPF, Doc. 168 (“Roadrunner Protective Order”).
Therefore, in resolving the motions to quash, the Court must determine whether the
subpoenas seek information subject to the Roadrunner Protective Order.
A. Subpoenas for information subject to the Roadrunner Protective Order
According to Jabil, four of the Non-Parties (Milacron, 3D Systems, Xerox, and
Desktop Metal) are “completely unfamiliar” with TenX because Jabil did not explore
business relationships with these companies until after its transition from TenX to
Roadrunner. 3 Therefore, the information sought is subject to the Roadrunner Protective
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Pointing to Jabil’s response to interrogatory 10 that identified Milacron, Desktop Metal,
and Xerox as “third parties with which Jabil has developed or entered into agreements of
any kind concerning the use of any feature or component of its TenX 3D printer,”
Essentium charges Jabil with “reversing its position” as to the timing of certain NonParties’ involvement with Jabil and its 3D printer programs. The Court finds that Jabil’s
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Order. Without knowing what TenX technology and parts are incorporated into the
Roadrunner program, however, Milacron, 3D Systems, Xerox, and Desktop Metal, each
lacks the ability to determine which documents in their possession are protected from
disclosure by the Roadrunner Protective Order. To address this issue, Jabil proposes a
multi-step plan: 1) that the Non-Parties be permitted to produce documents pursuant to
the subpoenas to Jabil; 2) that Jabil would review the documents and provide all
responsive, non-privileged documents with an appropriate confidentiality designation,
along with a log of any documents withheld on the basis of privilege. Essentium opposes
this plan, instead asking that the parties utilize the procedures set forth in the Stipulated
Protective Order.
The Court, however, has already found it necessary to provide additional
protection to the proprietary Roadrunner program beyond what is set forth in the
Stipulated Protective Order. The Court recognizes the validity of Jabil’s concern that
Non-Parties Milacron, 3D Systems, Xerox, and Desktop Metal, who had no involvement
and no familiarity with TenX, would not be capable of identifying which documents
relating to Roadrunner are protected from disclosure. Therefore, except as to Request No.
6, the Court adopts, in part and modifies in part, Jabil’s proposed multi-step procedure as
follows: 1) Milacron, 3D Systems, Xerox, and Desktop Metal shall produce to Jabil all
nonprivileged documents responsive to the applicable subpoena; 2) Jabil shall review the
documents and provide all those documents not protected from disclosure by the
response to interrogatory 10 is not inconsistent with the Declaration of John Dulchinos as
it is recognized that Roadrunner includes features and components of TenX.
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Roadrunner Protective Order or a claim of privilege to Essentium. In addition, Jabil shall
produce a log of any documents withheld on the basis of the Roadrunner Protective Order
or any claim of privilege by Jabil. 4 To the extent that Milacron, 3D Systems, Xerox, or
Desktop Metal assert a claim of privilege, information covered by the privilege may be
withheld from production to Jabil and Essentium so long as an appropriate privilege log
is provided.
Additionally, the Court notes that Request 6 in each of the subpoenas requests that
the Non-Parties produce documents and communications from Jabil and the Non-Parties
about Essentium, any of the defendants in the underlying litigation, Essentium’s HSE
printer, or the lawsuit filed by Jabil. According to Essentium, Request 6 “has nothing to
do with a trade secret,” and the Non-Parties should be instructed to respond because “[n]o
privilege, secret, or other protection shields this relevant information, which might reveal
information tending to show bias, motive, a statement against interest, etc.” Upon
consideration, the Court agrees, and directs that the Non-Parties produce nonprivileged
documents responsive to Request 6 to Jabil and Essentium simultaneously in accordance
with the Stipulated Protective Order.
The Court is not persuaded by Jabil’s request to quash the subpoenas in their
entirety due to the likelihood that documents in the Non-Parties’ possession are
duplicative of documents Jabil has already produced. The Non-Parties do not appear to
Documents that discuss or address “the TenX technology and parts that are incorporated
into the Roadrunner program” but also discuss or address further developments or
enhancements to such technology and parts should be produced, to extent practical, with
appropriate redactions.
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have objected to the subpoenas on burdensomeness grounds. Typically, a party would
not have “standing to quash the subpoenas on the grounds of oppression and undue
burden placed upon the third parties where the non-parties have not objected on those
grounds.” Auto-Owners Ins. Co. v. Floating Docks, Inc., 231 F.R.D. 426, 429 (M.D. Fla.
2005). Here, Jabil’s concern is its own time and expense required to review the documents
produced by the Non-Parties, not the Non-Parties’ time and expense complying with the
subpoenas. Jabil’s burden, however, is self-imposed. Upon consideration, the Court
declines to quash the subpoenas due to the expense and time involved in Jabil’s review of
the documents produced by the Non-Parties.
B. Subpoena for information not subject to the Roadrunner Protective Order
With respect to Essentium’s subpoena to Hewlett-Packard, Jabil pitched its TenX
printer to Hewlett-Packard in 2017 before Jabil fired its hardware team and developed its
Roadrunner program. Because Hewlett-Packard’s relationship with Jabil pre-dated the
Roadrunner program, any responsive documents that Hewlett-Packard has in its
possession could not pertain to the Roadrunner program. Therefore, the Roadrunner
Protective Order is inapplicable.
Accordingly, Hewlett-Packard shall produce non-
privileged documents to Jabil and Essentium simultaneously in accordance with the
Stipulated Protective Order. If documents are withheld on the basis of privilege, HewlettPackard shall produce a privilege log.
After consideration, it is hereby
ORDERED:
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1. Plaintiff’s Motion to Quash Defendant’s Subpoena to Milacron, LLC (Doc. 1,
case no. 8:21-mc-39-KKM-SPF) is GRANTED in part and DENIED in part.
No later than May 20, 2021, Non-Party Milacron is directed to produce to Jabil
and Essentium all nonprivileged documents responsive to Request 6 of the
Subpoena (Doc. 1-4).
Milacron is directed to produce nonprivileged
documents responsive to Requests 1-5 and 7-11 directly to Jabil. To the extent
that Milacron withholds any document on the basis of a claim of privilege, it
shall provide Jabil and Essentium an appropriate privilege log.
2. Plaintiff’s Motion to Quash Defendant’s Subpoena to Hewlett-Packard (Doc.
1, case no. 8:21-mc-56-KKM-SPF) is DENIED. No later than May 20, 2021,
Hewlett-Packard shall produce non-privileged responsive documents to Jabil
and Essentium simultaneously. To the extent that Hewlett-Packard withholds
any document on the basis of a claim of privilege, it shall provide Jabil and
Essentium an appropriate privilege log.
3. Plaintiff’s Motion to Quash Defendant’s Subpoena to 3D Systems (Doc. 1, case
no. 8:21-mc-57-KKM-SPF) is GRANTED in part and DENIED in part. No
later than May 20, 2021, Non-Party 3D Systems is directed to produce to Jabil
and Essentium all nonprivileged documents responsive to Request 6 of the
Subpoena (Doc. 1-3). 3D Systems is directed to produce documents responsive
to Requests 1-5 and 7-13 directly to Jabil. To the extent that 3D Systems
withholds any document on the basis of a claim of privilege, it shall provide
Jabil and Essentium an appropriate privilege log.
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4. Plaintiff’s Motion to Quash Defendant’s Subpoena to Xerox (Doc. 1, case no.
8:21-mc-58-KKM-SPF) is GRANTED in part and DENIED in part. No later
than May 20, 2021, Non-Party Xerox is directed to produce to Jabil and
Essentium all non-privileged documents responsive to Request 6 of the
Subpoena (Doc. 1-3). Xerox is directed to produce non-privileged documents
in response to Requests 1-5 and 7-11 directly to Jabil. To the extent that Xerox
withholds any document on the basis of a claim of privilege, it shall provide
Jabil and Essentium an appropriate privilege log.
5. Plaintiff’s Motion to Quash Defendant’s Subpoena to Desktop Metal (Doc. 1,
case no. 8:21-mc-62-KKM-SPF) is GRANTED in part and DENIED in part.
No later than May 20, 2021, Non-Party Desktop Metal is directed to produce
to Jabil and Essentium all non-privileged documents responsive to Request 6
of the Subpoena (Doc. 1-3).
Desktop Metal is directed to produce non-
privileged documents responsive to Requests 1-5 and 7-11 directly to Jabil. To
the extent that Desktop Metal withholds any document on the basis of a claim
of privilege, it shall provide Jabil and Essentium an appropriate privilege log.
6. No later than June 17, 2021, Jabil shall produce to Essentium all documents
received from the Non-Parties that are not protected from disclosure by either
the Roadrunner Protective Order or a claim of privilege. Jabil shall provide a
log listing any documents withheld on the basis of the Roadrunner Protective
Order or a claim of privilege.
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7. Jabil is directed to provide a copy of this Order to Milacron, Hewlett-Packard,
3D Systems, Xerox, and Desktop Metal.
8. Jabil’s requests for attorneys’ fees incurred in connection with the instant
motions and replies are DENIED.
ORDERED in Tampa, Florida, on May 6, 2021.
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