In Re: Zimmer Nexgen Knee Implant Products Liability Litigation

Filing 1012

MEMORANDUM Order. Signed by the Honorable Rebecca R. Pallmeyer on 12/10/2013. Mailed notice(meg, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
IN RE: ZIMMER NEXGEN KNEE
IMPLANT PRODUCTS LIABILITY
LITIGATION

)
)
)
)

No. 11 C 5468
Judge Rebecca R. Pallmeyer

MEMORANDUM ORDER
In these consolidated cases, Plaintiffs allege injury as a result of alleged defects in knee
implants manufactured by the Zimmer Defendants1 ("Zimmer"). Zimmer seeks a "Supplemental
Confidentiality Order" related to documents that it is producing in discovery which originate from
prior litigation and arbitrations between Defendants and Doctor W. Norman Scott. Through the
Steering Committee, Plaintiffs oppose this request and have moved to strike the declaration of
Brian Earl, Zimmer's Director of Knee Development, from the record. As explained below,
Defendants' motion [954] and Plaintiffs' motion [963] are both denied. On November 14, 2013,
based on the parties' respective proposed orders, the court drafted a memorandum order as
well as a proposed supplemental confidentiality order [999] for the parties' consideration. In
response to comments made by counsel at a status hearing the following day and upon further
consideration, the court has revised both its memorandum order and its proposed supplemental
confidentiality order (appended below).
BACKGROUND
The Zimmer Defendants manufacture artificial joints, including the knee implants at the
center of this pending MDL. The parties have already engaged in several months of discovery,
and Defendants have produced some 10.8 million pages of documents to date. (Status Hr'g Tr.
1

"Zimmer" includes the following defendants: Zimmer, Inc.; Zimmer Holdings, Inc.;
Zimmer Surgical, Inc. f/k/a Zimmer Orthopaedic Surgical Products, Inc.; Wilson/Phillips
Holdings, Inc., d/b/a Zimmer Wilson/Phillips; Orthopaedic Technologies, LLC, d/b/a Zimmer TriState (incorrectly named as (1) Zimmer Tri-State d/b/a Tri-State Orthopaedic, (2) Zimmer TriState d/b/a Zimmer, Inc., and/or (3) Zimmer Tri-State d/b/a Tri-State Orthopedic); K. Michael
Melia, d/b/a Zimmer Melia & Associates, Inc.; Zimmer Orthobiologics, Inc.; Zimmer US, Inc.; and
Zimmer Production, Inc.

of 11/15/13 at 52:10.) At issue now are additional documents sought by Plaintiffs that are, at
least in Defendants' view, tangential to this litigation: namely, Plaintiffs request documents
produced in several arbitrations and court actions relating to an intellectual property dispute
between Defendants and Doctor W. Norman Scott ("Scott"), an orthopedic surgeon who claimed
that he was entitled to royalties for work as a consultant in the design of various Zimmer knee
systems. (Defs.' Mot. for Supp. Conf. Order [954], hereinafter "Defs.' Mot.," at 2.) Defendants
read this recent request as requiring the production of some 481,573 additional pages of
documents and transcripts related to three Zimmer product lines: NexGen, NexGen Flex, and
Persona, and have asked the court for a protective order excusing compliance with it. (Id. at 23.) Following a discovery hearing on May 31, 2013 [877], the court granted Plaintiffs' motion to
compel and denied Defendants' motion for a protective order. As part of its ruling, the court
noted that it has already entered a broad protective order [165] and directed the parties to
negotiate any additional confidentiality provisions they deemed necessary.
In the months since then, the parties have attempted to reach an agreement as to a
supplemental protective order regarding the documents from the Scott proceedings ("Scott
materials"), and have exchanged drafts, but negotiations have stalled as to two issues: (1)
proposed restrictions on certain witnesses' access to the documents; and (2) proposed
restrictions on future employment by Defendants' competitors for any of Plaintiffs' experts who
are granted access to the documents.2 (Defs.' Mot. at 3.) Further, Defendants seek to bar
current employees and consultants of Zimmer's competitors from accessing the Scott materials,
while Plaintiffs' proposed order would not impose such a prohibition. (Ex. C. to Defs.' Mot., ¶ 3.)
2

Plaintiffs also object to Zimmer's refusal to create electronic versions of the Scott
materials. Thus far, Defendants have only allowed Plaintiffs' counsel to view paper copies.
(Pls.' Resp. [963] at 1 n.1, 10-11.) In their reply, however, Defendants acknowledge that
electronic production is appropriate and assure the court that Defendants "intend[] to provide
the PSC [(Plaintiffs' Steering Committee)] with copies of the SAEO [(Special Attorney's Eyes
Only)] documents in electronic format once the issues raised in the present motion are
resolved." (Defs.' Reply [965] at 2 n.3.)
2

DISCUSSION
I.

Supplemental Protective Order
The court may, "for good cause, issue an order to protect a party . . . from . . . undue

burden or expense" such as "requiring that a trade secret or other confidential . . . information
not be revealed or be revealed only in a specific way." FED. R. CIV. P. 26(c); see also Fed.
Open Market Comm. of Fed. Reserve Sys. v. Merrill, 443 U.S. 340, 356 (1979). Defendants
urge that producing the Scott materials, under either the existing protective order or Plaintiffs'
proposed supplemental order, would impose an undue burden; specifically, Defendants argue
that the Scott materials contain proprietary trade secrets related to Zimmer's Persona product
line, which Defendants are in the process of bringing to market. (Defs.' Mot. at 5.) Though
some Persona products have been available since November 2012, the full line will not come
out until "2016 at the earliest." (Id. at 8.) Defendants assert that, once exposed to these
materials, Plaintiffs' experts "cannot avoid being influenced by [them]" (Defs.' Reply at 5), such
that, even acting in good faith, the experts will be unable to resist "improperly using their review
of that information—even unconsciously—to assist Zimmer's competitors and to hurt Zimmer's
Persona sales." (Defs.' Mot. at 8.) Should a competitor gain access to the Scott materials,
Brian Earl, Zimmer's Director of Knee Development, estimates that Defendants would lose
"between $50 million and $100 million per year for the next several years." (Earl Decl., Ex. 2 to
Defs.' Mot., hereinafter "Earl Decl.," ¶ 12.)

"The only apparent solution to this danger,"

Defendants insist, "is for the court to bar Plaintiffs' experts who have access to the Persona
design documents from working for Zimmer's competitors for [three years] until the Persona line
is fully on the market . . . ."3 (Defs.' Mot. at 7.)

3

To substantiate its argument that the standing protective order currently covering
all experts in the case is insufficient, Defendants cite to several cases for the proposition that "a
human being cannot be compelled by simple fiat to unilaterally forget important or interesting
information, particularly where that information is central to the intellectual task the person is
(continued…)
3

In addition to this mandatory non-competition agreement, Defendants' proposed order
would also (1) create a two-tier designation for discovery materials, adding the designation of
"Special Attorney's Eyes Only" ("SAEO") for the Scott materials to the existing "confidential"
label in the standing protective order [165]; (2) require Plaintiffs to seek advance approval from
Zimmer before disseminating any SAEO information to any of Plaintiffs' experts who are
Zimmer's own former employees, current consultants, or former consultants; and (3) bar current
employees and consultants of Zimmer's competitors from any access to the SAEO material.4
(Defs.' Proposed Supplemental Confidentiality Order, hereinafter "Defs.' Proposed Order," Ex. 1
to Defs.' Mot., at 3-4.) Zimmer argues that it needs "both advance notice of Plaintiffs' intention
to show these extraordinarily sensitive documents to witnesses who are not Zimmer employees
and a means of objecting to such disclosure before it occurs." (Defs.' Mot. at 6.) Though they
urge these restrictions are necessary, Defendants nevertheless express confidence that
disclosure will not be a frequent issue of contention; rather, Zimmer "expects that it will have no
objection to Plaintiffs' attorneys showing SAEO documents to most consultant or former
employee witnesses to whom they have a reason to show them." (Id. at 5-6.)
Prior to the filing of Defendants' motion, the parties had been engaged in negotiations to
develop a mutually agreed supplemental protection order. Plaintiffs' position is that "there is no
need for a supplemental order," as the existing protective order and Zimmer's patent

performing." (Defs.' Reply at 5.) None of the cases cited, however, deal with protective orders.
Rather, all three focus on instructions and procedures designed to prevent juries from being
influenced by inadmissible evidence: United States v. Pino-Noriega, 189 F.3d 1089, 1096 (9th
Cir. 1999) (refusing to permit defendant to testify after announcement of verdict, noting "that's
too big a bell to unring"); Brodit v. Cambra, 350 F.3d 985, 1005 (9th Cir. 2003) (citing value of
motions in limine in avoiding "the obviously futile attempt to 'unring the bell'"); Maestas v. United
States, 341 F.2d 493, 496 (10th Cir.1965) (noting futility of cautionary instruction "where the
character of the testimony is such that it will create so strong an impression on the minds of the
jurors that they will be unable to disregard it in their consideration of the case").
4
Zimmer's proposed order is modeled after a confidentiality order imposed in the
arbitrations involving Dr. Scott and the Persona product line in 2011, before the Persona knee
system was public knowledge. (Def. Mot. at 2.)
4

applications for the Persona Knee System are sufficient to protect Defendants' interests. (Pls.'
Resp. [963] at 4 n.3.) If, however, the court determines that a supplemental order is warranted,
Plaintiffs have directed the court to a version of the proposed order "reflecting Plaintiffs' view of
the state of negotiations." (Pls.' Resp. at 4 n.3.; E-mail from Becker to Fiterman of 8/28/13,
hereinafter "Pls.' Proposed Order," Ex. A to Pls.' Resp.) This version, which includes numerous
suggested deletions, additions, and modifications, was e-mailed to Defendants by Plaintiffs on
August 28, 2013. Notably, Plaintiffs' version is consistent with Defendants' in that it would (1)
establish dual-tier protection for sensitive documents produced by Zimmer (i.e., "confidential"
and "special attorneys eyes only"); and (2) prohibit any experts who access the Scott materials
from participating in patent prosecution activities involving knee replacements for a period of two
years. (Pls.' Proposed Order ¶¶ 2-3.) Plaintiffs' order differs from Defendants', however, in
three major respects: (1) it would not require prior notice to Zimmer before disclosure of SAEO
documents to former Zimmer employees, current Zimmer consultants, and former Zimmer
consultants; (2) it would not require Plaintiffs' experts who review the SAEO documents to sign
a non-competition agreement; and (3) it would not bar current employees and consultants of
Zimmer competitors from accessing the SAEO documents.
In favor of their proposed order, Plaintiffs point out that the existing protective order
already limits disclosure of documents stamped "confidential" to the parties, their law firms, and
"any person(s) noticed for deposition or designation as trial witnesses, who has knowledge of
the subject matter to which the documents relate[.]" (Pls.' Resp. at 5; Protective Order [165],
¶¶ 3-4.)

Disclosure of confidential documents and their contents to any other person is

prohibited "except with the prior written consent of the party . . . designating a document as a
Stamped Confidential Document." (Protective Order ¶ 3.) And any individual who reviews a
Stamped Confidential Document must sign a confidentiality agreement that prohibits the use of
said document "for any purpose other than this litigation." (Protective Order ¶ 4; Confidentiality
5

Agreement, Ex. A to Protective Order, ¶ 3.) In light of these existing restrictions, Plaintiffs
suspect that Defendants' request for a three-year non-competition agreement for all experts
who review the Scott materials is aimed more at impeding Plaintiffs' pursuit of their claims than
at protecting Zimmer's trade secrets. (Pls.' Resp. at 6.) For support, Plaintiffs cite to the
deposition of Brian Earl, who acknowledged that the proposed order would impose harsher
restrictions on Plaintiffs' experts than those that Zimmer includes in contracts with its own
employees and consultants. (Earl Dep., Ex. C to Pls.' Notice of Supp. Authority [973], at 44:1945:1.)

For instance, Zimmer requires its own consultants to sign ten-year non-compete

agreements (Earl Decl. ¶ 7), but those restrictions apply only to future work on knee
arthroplasty. (Earl Dep. at 24:4-20.) Earl himself, and other Zimmer employees, sign eighteenmonth non-compete agreements limited to the products they worked on. (Id. at 10:16-12:17.)
The restrictions proposed by Defendants here, in contrast, would prohibit Plaintiffs' experts from
working with any Zimmer competitor on any product for three years. (Defs.' Proposed Order at
3-4.)
Multi-tier protective orders are relatively common in cases between direct competitors.
See, e.g., Santella v. Grizzly Indus., 286 F.R.D. 478, 482 (D. Or. 2012) ("Because SawStop and
Grizzly compete in the manufacture and sale of table saws, this court entered a two-tier
protective order."); Apple Inc. v. Samsung Elecs. Co., No. 11 C 1846, 2012 U.S. Dist. LEXIS
49201 (N.D. Cal. Jan. 30, 2012) (creating three levels of confidentiality designation for
documents produced in discovery in intellectual property litigation between market rivals).
Where, as here, the parties are not competitors, the need for extreme protective measures is
less obvious.
Moreover, even in highly contentious litigation between business rivals, the protections
Defendants are seeking appear to be unprecedented. Zimmer relies on the confidentiality order
imposed in its earlier arbitration with Scott, but cites to no instance in which a court has been
6

willing to impose a mandatory non-compete agreement on an opposing party's experts. This
court has been similarly unable to find any such precedent in the Seventh Circuit (or elsewhere)
either approving or disapproving of such an agreement.5

To the extent that such a non-

competition provision was appropriate in the Scott arbitration, where Zimmer was opposed by a
doctor who also designs knee replacements, it is less compelling in a case such as this, alleging
products liability. Further, the need for aggressive protection of Defendants' intellectual property
has diminished in the intervening years, as the life cycle of the Persona product line has
progressed.

(Pls.' Resp. at 7-8.)

Zimmer has not satisfied the court that such a drastic

measure—a non-competition agreement for all experts—is necessary to protect Zimmer's
competitive advantage with regard to products that are already on the market or will be in the
near future.
Similarly, requiring Plaintiffs to seek Zimmer's advanced approval before sharing the
Scott materials with any expert who is or was a Zimmer employee or consultant appears to be
unnecessary. Not only does the existing protective order (which would also apply to the SAEO
documents) already protect Zimmer's interests through the threat of contempt, but it also limits
the dissemination of any confidential documents to those individuals who already possess
"knowledge of the subject matter to which the documents relate." (Protective Order ¶ 3(d).) If
Zimmer believed that the information in the Scott materials was too sensitive to be shared with
particular former employees or consultants, the court presumes that Zimmer would not have
granted them access to this information at the time they were employed or engaged by Zimmer.
If disclosure of the Scott materials does create genuine risk, because of the possibility that
Plaintiffs' experts might violate the court's existing protective order by disclosing Zimmer's trade
5

Plaintiffs' response cites to several cases for the proposition that the noncompete requirement included in Defendants' proposed order is unreasonable and should be
denied. (Pls.' Resp. at 6-7.) Each of these cases, however, involves the reasonableness of a
contractual non-compete clause voluntarily entered into by parties outside of the litigation
context. As such, these cases have little bearing on the instant issue.
7

secrets to competitors, the court notes that Defendants themselves admit that it would take at
least two years for a competitor to bring products utilizing that knowledge to market. By that
time, the Persona products would be established in the market, presumably with appropriate
patent protection. (Earl Dep. at 134:12-14.)
As the court has observed, the threat posed to Zimmer by permitting Plaintiffs' experts to
have access to proprietary information in this instance is generally diminished by the fact that
the instant case is not one between competitors. There may indeed be some competitive threat
in circumstances where Plaintiffs' experts are currently employed by Zimmer's direct
competitors (either as employees or consultants) and are working on products that directly
compete with those at issue in this suit (i.e., knee implants). The existing protective order
imposes restrictions on such individuals, but the court recognizes that disclosure of confidential
trade secrets to experts who work for Zimmer's peers may nevertheless present at least a
theoretical risk analogous to the risks arising from disclosure in litigation between market rivals.
And in that context, courts have frequently employed protective orders barring the employees of
parties' competitors from accessing highly sensitive information. See, e.g., Apple Inc., No. 11
CV 1846, 2012 U.S. Dist. LEXIS 49201, *19 (barring the disclosure of confidential information to
any person that is "a current officer, director, or employee of a Party or of a competitor of a
Party with respect to the subject matter of the patents-in-suit"). Accordingly, the court finds
good cause for Defendants' proposed prohibition of disclosure of the Scott materials and other
SAEO information to its competitors' employees and consultants who are currently working on
products that compete with the products at issue in this suit.
Defendants have not demonstrated, however, that it would be subjected to an undue
burden if (1) Plaintiffs' experts who are also current or former consultants and employees of
Zimmer are granted access to the Scott materials without Zimmer's advanced approval; or (2)
experts who review the Scott materials are not required to agree to a non-competition
8

agreement. Defendants' motion for a supplemental confidentiality order is, therefore, denied.
Given the apparent progress between the parties regarding a supplemental order, however, the
court declines to rely exclusively on the existing protective order. Instead, the court has drafted
a proposed supplemental confidentiality order (attached below) consistent with the parties'
negotiations and the reasoning above.
This proposed order would supplement rather than supersede the existing protective
order [165].

Importantly, this means that paragraph seven of the protective order, which

established the procedure by which the parties may object to the confidentiality designation of
any document, applies with equal force to any documents designated as SAEO in the Scott
proceedings. Due to the fact that the SAEO designation was originally adopted in the Scott
proceedings—which arose out of an intellectual property dispute—this procedure may be
particularly significant in the context of the Scott materials because Plaintiffs' interest in sharing
these documents with experts may be inconsistent with Scott's. For instance, in support of his
claim that he played a role in designing the knee systems detailed in the SAEO documents,
Scott may have had no need or desire to disseminate these materials to third parties, and
therefore no real motivation to object to the designation of these documents as highly
confidential. In this litigation, in contrast, the Scott materials are useful to the Plaintiffs only to
the extent that experts may access and analyze them. Given the potential incongruity between
the use of the SAEO documents by Scott and Plaintiffs, the objection procedure of paragraph
seven allows the parties to correct any instances where that protection may be inappropriately
broad (or narrow) in the context of this litigation.
II.

Declaration of Brian Earl
In addition to opposing Defendants' proposed supplemental confidentiality order,

Plaintiffs have moved to strike the declaration of Brian Earl ("Earl"), Zimmer's Director of Knee
Development, on the grounds that it is "based entirely on inadmissible hearsay and
9

speculation." (Pls.' Resp. at 11.) Specifically, Plaintiffs object to the lack of "proof, evidence, or
documentation to support [Earl's] contentions" regarding the mental states of Plaintiffs' experts
(Id. at 11-12; Earl Decl. ¶¶ 9-11) and the impact of SAEO documents in a competitor's hands.
(Pls.' Resp. at 12-13; Earl Decl. ¶ 12.)
In light of the court's proposed resolution of the protective order dispute, it is not
necessary to address this objection at length, but the court does not find it compelling. Earl's
statements do not appear to rest on hearsay.

As a long-time, high-ranking employee of

Zimmer's knee division, Earl has sufficient first-hand knowledge to substantiate his declaration.
Under the Federal Rules of Evidence, a witness must have personal knowledge of the matter
about which he or she testifies, FED. R. EVID. 602, but nothing in the Federal Rules requires a
witness, or declarant, with personal knowledge to cite to additional evidentiary support. While
Earl admitted in his deposition testimony that his prospective loss calculations were based on
his "best hunch" (Earl Dep. at 146:7-21), this fact goes to weight and does not provide a
sufficient basis for striking Earl's declaration.
Plaintiffs' motion to strike the Earl declaration is denied.
CONCLUSION
For the foregoing reasons, Defendants' motion for a protective order [954] and Plaintiffs'
motion to strike the Earl declaration [963] are both denied. The court's proposed supplemental
confidentiality order is appended below. The court invites the parties to make any objections or
suggestions for further modifications to this proposal within 14 days.
ENTER:

Dated: December 10, 2013

_________________________________________
REBECCA R. PALLMEYER
United States District Judge

10

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
IN RE: ZIMMER NEXGEN KNEE
IMPLANT PRODUCTS LIABILITY
LITIGATION

)
)
)
)

No. 11 C 5468
Judge Rebecca R. Pallmeyer

PROPOSED SUPPLEMENTAL CONFIDENTIALITY ORDER
This Confidentiality Order supplements the court's May 31, 2013 Order addressing the
production of documents from certain arbitrations and litigation between Defendants and W.
Norman Scott [877], specifically:
Scott v. Zimmer, Inc., AAA Case No. 51 133 Y 01123 04;
Scott and Scuderi v. Zimmer, Inc., Case No. 10-772 (GMS) (D. Del.);
Scott v. Zimmer Holdings, Inc., AAA Case No. 51 193 Y 00439 08;
Scott v. Zimmer, Inc., AAA Case No. 51 122 00721 10; and
Scott v. Zimmer, Inc., AAA Case No. 51 122 Y 1151 10.
This Order supplements and does not supersede the Protective Order this court entered on
November 17, 2011 [165] (hereinafter "Protective Order"), and all provisions of that existing
Protective Order remain in full force, except as specifically provided in this Supplemental
Confidentiality Order.
1.

In separate Confidentiality Agreements and Orders entered in the arbitrations

and litigation listed above, the parties used different terms to designate documents that contain
information entitled to protection under Federal Rule of Civil Procedure 26(c)(7) or equivalent
federal or state statutes or regulations. The terms used included:
• "CONFIDENTIAL"
• "CONFIDENTIAL—SUBJECT TO CONFIDENTIALITY ORDER"
• "HIGHLY CONFIDENTIAL—OUTSIDE COUNSEL ONLY"
11

• "HIGHLY CONFIDENTIAL"
• "ATTORNEYS EYES ONLY"
• "ATTORNEYS EYES ONLY—SUBJECT TO CONFIDENTIALITY AGREEMENT"
• "SPECIAL ATTORNEYS EYES ONLY"
2.

All documents, depositions, and other materials produced from the five matters

listed above that bear any of the designations "CONFIDENTIAL," "CONFIDENTIAL SUBJECT
TO CONFIDENTIALITY ORDER," "HIGHLY CONFIDENTIAL—OUTSIDE COUNSEL ONLY,"
"HIGHLY CONFIDENTIAL," "ATTORNEYS EYES ONLY," or "ATTORNEYS EYES ONLY—
SUBJECT TO CONFIDENTIALITY AGREEMENT" will be treated in all respects as "Stamped
Confidential Documents" as that term is used in the existing Protective Order [165]. Such
documents will enjoy the same protections and be subject to the same procedures as all other
documents designated "CONFIDENTIAL" or "CONFIDENTIAL—SUBJECT TO PROTECTIVE
ORDER" pursuant to paragraph 1(a) of the existing Protective Order.
3.

The following procedures shall apply only to documents and materials

designated "SPECIAL ATTORNEYS EYES ONLY."
A.

Scope Of Designation
1.

The designation "SPECIAL ATTORNEYS EYES ONLY" shall be reserved solely

for highly sensitive information regarding unreleased or recently released orthopaedic systems
or components, such as specifications, drawings, manufacturing processes, and other
medically, scientifically, or commercially sensitive documents or information, or other things
containing substance, summaries, abstracts or indices thereof (collectively "Special AEO
Information").
2.

In the event that Plaintiffs disagree with the designation of any document as

SAEO under this Supplemental Protective Order, Plaintiffs may object to the designation
pursuant to the procedure outlined in Paragraph 7 of the Protective Order.
12

B.

Supplemental Procedures For Handling Of Special AEO Information.
1.

Access to Special AEO Information is limited to (a) attorneys on the Plaintiffs

Steering Committee (including partners, associates, paralegals, and secretaries of such
attorneys to the extent reasonably necessary to render professional services in this Litigation)
and (b) outside consultants or experts retained by the Plaintiffs Steering Committee (collectively,
"Authorized Persons"), in accordance with Paragraph 4 of the Protective Order. Such access
may be granted only to Authorized Persons who have subscribed to the Confidentiality
Agreement attached as Exhibit B to this Supplemental Confidentiality Order and who have
agreed to comply with all the provisions set forth for the handling of confidential materials in the
Protective Order and in this Supplemental Confidentiality Order.
2.

Prior to disclosing any Special AEO Information to an outside consultant or

expert, in addition to the requirements of Paragraph 4 of the Protective Order, Plaintiffs' counsel
shall secure from the outside consultant or expert, in writing in the form attached as Exhibit C, a
commitment that the expert or consultant is not presently (a) an officer, director, or employee of
a competitor of Defendants with respect to the products at issue in the present suit, or (b)
involved in competitive decision-making for a competitor of Defendants as defined by U.S. Steel
v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), with respect to the products at issue
in the present suit.
3.

In the case of any expert or consultant that Plaintiffs designate as a testifying

expert, Plaintiffs' counsel shall provide a copy of the executed Exhibit C for that expert to
Zimmer's attorneys at the time they provide the other expert disclosures required by Federal
Rule of Civil Procedure 26(b).
4.

In addition, subject to all of the other requirements in the Protective Order and

this Supplemental Confidentiality Order, Special AEO Information may be disclosed to (1) the
court, (2) persons designated by the court in the interest of justice, upon such terms as the court
13

deems proper, (3) a witness who is or was a Zimmer employee; (4) a person who is or was a
Zimmer consultant; (5) court reporters, and (6) persons operating video recording equipment at
depositions. With regard to any other witnesses not covered by this paragraph, the Parties will
meet and confer regarding the use of the document(s). If no agreement can be reached, the
parties shall seek relief from the court as appropriate.
5.

Any pleading, memorandum, or expert report that includes Special AEO

Information shall be labeled "SPECIAL ATTORNEYS EYES ONLY INFORMATION" and treated
in accordance with the terms of the "Special Attorneys Eyes Only" provisions of this
Supplemental Confidentiality Order.
C.

Submissions To The Court
Plaintiffs' Counsel of Record in this Litigation and experts may use Special AEO

Information as exhibits in support of briefs or other filings for submission to the court. If Plaintiffs'
counsel wishes to submit to the court any Special AEO Information, that counsel shall file the
submission containing the Special AEO information with the court under seal, utilizing the
court's ECF system. All submissions containing such information must bear the Special AEO
protective markings specified in this Supplemental Confidentiality Order. If Zimmer objects to
the filing of any Special AEO information in any other party's submission, Zimmer may move the
court to strike the submission or for such other relief as may be appropriate. A party filing a
submission containing Special AEO information under seal need not bring a separate motion for
leave to file under seal as otherwise contemplated by Local Rule 26.2.
D.

Patent Restrictions
Any person reviewing for Plaintiffs any "CONFIDENTIAL," "CONFIDENTIAL—SUBJECT

TO CONFIDENTIALITY ORDER," "HIGHLY CONFIDENTIAL—OUTSIDE COUNSEL ONLY,"
"HIGHLY CONFIDENTIAL," "ATTORNEYS EYES ONLY," "ATTORNEYS EYES ONLY—
SUBJECT TO CONFIDENTIALITY AGREEMENT," or "SPECIAL ATTORNEYS EYES ONLY"
14

documents shall not, for a period commencing upon the receipt of such information and ending
two years following such receipt, engage in any Patent Prosecution Activities on behalf of any
individual or entity with respect to knee replacement. "Patent Prosecution Activities" means the
direct or indirect involvement in drafting or amending of patent claim(s) on behalf of a patentee
or assignee of a patentee's rights. Nothing in this paragraph shall prevent any attorney from
sending Prior Art to an attorney involved in patent prosecution for purposes of ensuring that
such Prior Art is submitted to the U.S. Patent and Trademark Office (or any similar agency of a
foreign government) to assist a patent applicant in complying with its duty of candor.

APPROVED THIS 10th DAY OF December, 2013

By the court:

___________________________
REBECCA R. PALLMEYER
United States District Judge

15

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
IN RE: ZIMMER NEXGEN KNEE
IMPLANT PRODUCTS LIABILITY
LITIGATION

)
)
)
)

No. 11 C 5468
Judge Rebecca R. Pallmeyer

EXHIBIT B TO SUPPLEMENTAL CONFIDENTIALITY ORDER
l.

I hereby acknowledge that I am about to receive highly confidential information produced

in the above captioned litigation.
2.

I have read the Court's Protective Order and Supplemental Confidentiality Order

governing the restricted use of confidential information in this litigation, copies of which have
been provided to me. I hereby agree to be bound by the terms of the Protective Order and the
Supplemental Confidentiality Order.
3.

I further agree that I will not utilize any stamped confidential document or other

information subject to the Protective Order and the Supplemental Confidentiality Order for any
purpose other than as permitted by those Orders. I further affirm that I will not reveal the
confidential information to, nor discuss the confidential information with, anyone, except in
accordance with the terms of the Protective Order and the Supplemental Confidentiality Order.
4.

At the termination of this Litigation, I will return all documents marked with the legend

"Confidential," "Confidential-Subject to Confidentiality Agreement," "Highly Confidential—
Outside Counsel Only," "Highly Confidential," "Attorneys Eyes Only," "Attorneys Eyes Only—
Subject To Confidentiality Agreement," or "Special Attorneys Eyes Only Information," as well as
any copies, summaries or abstracts of same, and documents related thereto, to the attorney
providing confidential materials to me.
5.

I further acknowledge that by signing this Confidentiality Agreement I submit to the

jurisdiction of the United States District Court for the Northern District of Illinois or any other

16

court of competent jurisdiction, as necessary to enforce the provisions of the Protective Order
and the Supplemental Confidentiality Order.

Dated: __________________, 20___

__________________________________
Signature
___________________________________
Printed Name
___________________________________
Address
___________________________________
City, State, Zip
___________________________________
Telephone Number

17

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
IN RE: ZIMMER NEXGEN KNEE
IMPLANT PRODUCTS LIABILITY
LITIGATION

)
)
)
)

No. 11 C 5468
Judge Rebecca R. Pallmeyer

EXHIBIT C TO SUPPLEMENTAL CONFIDENTIALITY ORDER
l.

I hereby acknowledge that I am about to receive highly confidential information produced

in the above captioned litigation.
2.

I have read the court's Protective Order and Supplemental Confidentiality Order

governing the restricted use of confidential information in this litigation, copies of which have
been provided to me. I hereby agree to be bound by the terms of the Protective Order and the
Supplemental Confidentiality Order.
3.

I understand that as a condition of receiving Special Attorneys Eye Only documents, I

must represent that I am not presently (a) an officer, director, or employee of a competitor of
Defendants with respect to the products at issue in the present suit, or (b) involved in
competitive decision-making for a competitor of Defendants as defined by U.S. Steel v. United
States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), with respect to the products at issue in the
present suit.
4.

I further acknowledge that by signing this Confidentiality Agreement I submit to the

jurisdiction of the United States District Court for the Northern District of Illinois or any other
court of competent jurisdiction, as necessary to enforce the provisions of the Protective Order
and the Supplemental Confidentiality Order.

18

Dated: __________________, 20___

__________________________________
Signature
___________________________________
Printed Name
___________________________________
Address
___________________________________
City, State, Zip
___________________________________
Telephone Number

19