J&M Industries, Inc. v. Raven Industries, Inc.

Filing 52

MEMORANDUM AND ORDER granting in part and denying in part 30 Motion for Protective Order; denying 32 Motion for Protective Order. Signed by Magistrate Judge Kenneth G. Gale on 7/18/17. (df)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS

J&M INDUSTRIES, INC.,

)
)
Plaintiff,
)
)
RAVEN INDUSTRIES, INC.
)
)
Defendant.
)
___________________________________ )

Case No.: 16-2723-JTM-KGG

ORDER ON MOTIONS FOR PROTECTIVE ORDERS
Now before the Court are the parties motions for a Protective Order (Docs.
30, 32). Having reviewed the submissions of the parties, Plaintiff’s motion (Doc.
30) is GRANTED in part and DENIED in part. Defendant’s motion (Doc. 32) is
DENIED.
FACTS
This is a patent infringement case brought pursuant to 35 U.S.C. § 271, et
seq. The parties are competitors in the grain storage cover industry. The parties,
as competitors, agree that there is a need for discovery in this case to be governed
by a Protective Order, but disagree as to certain particulars. Each issue with be
analyzed in turn.
ANALYSIS
I.

Protective Orders.

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Federal Rule of Civil Procedure 26(c) governs Protective Orders and
provides, in relevant part:
A party or any person from whom discovery is sought
may move for a protective order in the court where the
action is pending.... The motion must include a
certification that the movant has in good faith conferred
or attempted to confer with other affected parties in an
effort to resolve the dispute without court action. The
court may, for good cause, issue an order to protect a
party or person from annoyance, embarrassment,
oppression, or undue burden or expense, including one or
more of the following:
(A) forbidding the disclosure or discovery;
(B) specifying terms, including time and place, for
the disclosure or discovery;
***
(D) forbidding inquiry into certain matters, or
limiting the scope of disclosure or discovery to
certain matters;
(E) designating the persons who may be present
while the discovery is conducted;
***
(G) requiring that a trade secret or other
confidential research, development, or commercial
information not be revealed or be revealed only in
a specified way; . . . .
Fed.R.Civ.P. 26(c)(1). Thus, the party seeking the Protective Order has the burden
of showing good cause for it to be entered. Id.

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II.

Plaintiff’s Proposed Protective Order.
Plaintiff seeks the Court’s assistance on the following two issues regarding

the Protective Order:
(1) the requirement for each party to provide to the
opposing party a copy of the Confidentiality
Acknowledgement [sic] signed by any potential,
anticipated or actual third party fact witness who is in
receipt of opposing party’s confidential information; and
(2) the circumstances, if any, under which in-house
counsel for [Defendant] may have access to Attorneys'
Eyes Only (‘AEO’) information.
(Doc. 31, at 1.)
A.

Confidentiality Acknowledgments from Witnesses.
The parties have agreed as to the portion of the proposed Protective Order

relating to the viewing of designated confidential information by third parties. The
process requires the party sharing the confidential information to have the third
party complete a certification (hereinafter “Confidentiality Acknowledgment”) that
they have read the Protective Order and agree to be bound by its terms. Plaintiff
seeks a provision in the Protective Order that would require any party that obtains
a Confidential Acknowledgment to deliver it to opposing counsel within 5 days.
(See Doc. 31, at 2; Doc. 31-1, at 14.) Plaintiff argues that this “safeguard” benefits
both parties as it “enables the parties to track the disclosure of their confidential
information.” (Doc. 31, at 2.)

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Defendant argues that this procedure violates the work product doctrine.
(Doc. 35, at 5-6.) More specifically, Defendant argues that this proposal would
require Defendant “to divulge its investigation and who it is interviewing as that
investigation unfolds.” (Id., at 6.)
Plaintiff contends that the proposed provision is much more limited than
this. Plaintiff is not seeking the identities of everyone interviewed or the details of
Defendant’s investigation, rather Plaintiff is “merely seek[ing] that the parties
provide the Confidentiality Acknowledgments for third parties receiving
confidential information belonging to the opposing party (wherein the
Confidentiality Acknowledgments disclose the witness name and the date of
signature).” (Doc. 31, at 3-4 (emphasis in original).)
The case law cited by the parties evidences a dispute in authority as to
whether the identities of parties interviewed by opposing counsel are discoverable
fact information or protected by the work product doctrine. Compare Equal Emp’t
Oppty. Comm’n v. BNSF Ry Co., 12-2634-JWL-KGG, 2014 WL 2589182 (D.
Kan. June 10, 2014) (holding that factual information such as who was
interviewed, when it occurred and who was present is not protected by the work
product doctrine) with Thompson v. Jiffy Lube Int’l, Inc., 05-1203-WEB-KMH,
2006 WL 2037395, at *2 (D. Kan. July 18, 2006) (acknowledging the difference

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between the identities of persons with knowledge versus persons interviewed by
counsel).
The issue was, however, recently addressed by another court within the
Tenth Circuit in American Auto. Ins. Co. v. First Mercury Ins. Co., et al., in the
context of a deponent being asked which company employees had been
interviewed by counsel. No. 13-04390-MCA-LF, 2016 WL 7395219 (D. N.M.
Oct. 22, 2016). The deponent was instructed not to answer the question on the
basis of the attorney work product doctrine.
After acknowledging the lack of definitive Tenth Circuit authority, the
American Auto. court stated that
[t]he weight of authority . . . suggests that discovery that
seeks the identity of persons with knowledge is
permissible, whereas discovery that seeks the identity of
persons whom counsel has interviewed is not. See
Massachusetts v. First Nat'l Supermarkets, Inc., 112
F.R.D. 149, 152 (D. Mass. 1986) (‘when the terms of the
interrogatory are not cast in terms of identification of
persons with knowledge but rather in terms of the
identification of persons interviewed by counsel, the
work-product doctrine may be applicable’). Disclosure
of the identities of witnesses interviewed ‘would
inevitably teach [the requesting party] which individuals
[opposing counsel] considered more or less valuable as
witnesses and how [he or she] was preparing for trial.’
United States v. District Council of New York City and
Vicinity of the United Brotherhood of Carpenters and
Joiners of America, et al., No. 90 CIV. 5722 (CSH),
1992 WL 208284, at *10 (S.D.N.Y. Aug. 18, 1992)
(unpublished) (citing Appeal of Hughes, 633 F.2d 282,
288–90 (3d Cir. 1980) (additional citations omitted)).
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2016 WL 7395219, at *4. The court upheld counsel’s instruction that the deponent
not answer the question.
The issue before the Court is distinguishable from American Auto because
opposing counsel is not directly requesting the names of witnesses interviewed by
counsel. Rather, the disclosure at issue (which would be required by the Protective
Order) requires counsel to produce to opposing counsel any Confidentiality
Acknowledgments executed by third parties. The fact that it may be inferred that
the individuals who executed the Confidentiality Acknowledgments have been
interviewed by counsel is incidental. Even assuming that such disclosures would
concurrently impede on the protection otherwise afforded by the work product
doctrine, the need for the parties in this case to track the dissemination of their
confidential information as part of the Protective Order constitutes “substantial
need” for the information to be produced. See Fed.R.Civ.P. 26(b)(3).1 The
disclosure of the Confidentiality Acknowledgments is the best way to insure their
effectiveness.
The Court, therefore, GRANTS the portion of Plaintiff’s motion relating to
the production of Confidentiality Acknowledgments (Doc. 30). Copies of any
executed Confidentiality Acknowledgments obtained in this case from non1

The production of Confidentiality Acknowledgments does not apply to nontestifying consultants and non-testifying experts under Fed.R.Civ.P. 26(b)(4). Such
individuals are part of the litigation team and their identities are protected pursuant to
Rule 26.
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experts/non-consultants must be provided to opposing counsel within thirty (30)
days of execution. Copies of any executed Confidentiality Acknowledgments
obtained in this case from non-testifying experts and/or consultants must be
maintained by counsel who originally had the acknowledgment executed for a
period of two years following the disposition of this case, subject to court-ordered
disclosure for exceptional circumstances within the meaning of Fed.R.Civ.P.
26(b)(4)(D).
B.

In House Counsel Access to “Attorneys’ Eyes Only” Information.
The parties have agreed to a two-tier confidentiality designation allowing for

certain information to be labeled “Attorneys’ Eyes Only” (hereinafter “AEO”).
The parties disagree, however, as to whether Defendant’s in-house attorneys
should be allowed to receive information that has been so designated. Plaintiff has
divided such information into two categories: “secret technical information” and
“proprietary financial information.”
1.

Technical information.

Plaintiff admits that “the vast majority of documents pertaining to patent
infringement and patent validity are public.” (Doc. 31, at 6.) Thus, according to
Plaintiff, in-house counsel need not have access to “secret technical information”
to direct the litigation. If, however, some of Plaintiff’s “secret technical
information” is relevant to the question of patent validity, Plaintiff contends that

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Defendant’s “competent outside patent counsel can advise [Defendant] as to the
impact of such information on the validity of the patent,” making the disclosure to
Defendant’s in-house counsel unnecessary. (Id.)
Plaintiff has not, however, made a specific showing of potential harm to
exclude in-house counsel from any such information. Plaintiff has made no
showing of any specific “secret technical information” that will be at issue. As
such, Plaintiff has not met its burden pursuant to Fed.R.Civ.P. 26(c) to establish
good cause for the Court to enter a Protective Order prohibiting in-house counsel
from accessing this type of AEO information. This portion of Plaintiff’s motion is
DENIED.
2.

Proprietary financial information.

The parties also disagree as to whether Defendant’s in-house general counsel
Lindsay Edwards should have access to certain of Plaintiff’s proprietary financial
information marked AEO. Plaintiff wants the ability to mark certain types of this
information as “Attorneys’ Eyes Only/Key Personnel.” Such documents would be
produced in redacted form “or a document providing a restricted summary of the
parties Attorneys’ Eyes Only financial information.” (Doc. 31, at 7-8.) Defendant
objects to this and contends it is necessary for Ms. Edwards to see this information
in order to properly evaluate and direct the case. Plaintiff contends the proposed
procedure would allow “the parties to adequately direct litigation and to also

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engage in settlement discussions while still limiting the disclosure of their
proprietary financial information . . . .” (Id., at 8.)
Plaintiff has again failed to make a specific showing of potential harm that
would warrant excluding in-house counsel from having access to this information.
To the contrary, access to this information will be necessary in order for Defendant
to prosecute this case and evaluate potential damages. Thus, Plaintiff has failed to
meet its burden pursuant to Fed.R.Civ.P. 26(c) to establish good cause for the
Court to enter a Protective Order prohibiting in-house counsel from accessing this
AEO financial information. This portion of Plaintiff’s motion is DENIED.
III.

Defendant’s Proposed Protective Order.
Defendant requests that the Court include a patent prosecution bar in the

Protective Order precluding Plaintiff’s “litigation counsel with access to
[Defendant’s] ‘Confidential’ or ‘Attorneys’ Eyes Only’ information from also
prosecuting patents on behalf of [Plaintiff] concerning related technology.” (Doc.
33, at 1-2.) Defendant also seeks to have Ms. Emily Lippold Gummer, one of
Plaintiff’s lead patent attorneys, from accessing Defendant’s “Attorneys’ Eyes
Only” information. (Id.)
A party seeking a patent prosecution bar must establish good cause for doing
so. In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir.
2010). “Courts have recognized . . . that there may be circumstances in which even

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the most rigorous efforts of the recipient of such information to preserve
confidentiality in compliance with the provisions of such a protective order may
not prevent inadvertent compromise.” Id. “The concern over inadvertent
disclosure manifests itself in patent infringement cases when trial counsel also
represent the same client in prosecuting patent applications before the PTO.” Id.,
at 1379. The issue will turn on whether the attorney involved in the patent
prosecution engages in “competitive decisionmaking” in that role. In re Deutsche
Bank, 605 F.3d at 1379. “Because patent prosecution is not a one-dimensional
endeavor and can encompass a range of activities, it is shortsighted to conclude
that every patent prosecution attorney is necessarily involved in competitive
decisionmaking. . . . The facts, not the category must inform the result.” Id.
In this context, the Deutsche Bank court created the following test to apply
when a patent prosecution bar is requested:
We therefore hold that 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
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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.
Id., at 1381.
Defendant contends that “the two lead litigation attorneys for J&M, Ray
Areaux and Emily Lippold Gummer, have prosecuted patents for J&M and are also
the lead attorneys currently seeking patent protection for J&M on the same product
– grain storage covers.” (Doc. 33, at 4.) Defendant argues that “[w]here the same
attorneys try to do both patent litigation and prosecution for the same client on the
same technology, there is a compelling need for a prosecution bar to safeguard
against inadvertent disclosure or misuse of sensitive information.” (Id., at 7.)
Because Ms. Lippold Gummer and Mr. Areaux are involved in “investigating,
defining, and drafting” other grain storage cover patent applications, Defendant
argues that they are “engaged in precisely the type of dual roles that justify a patent
prosecution bar.”2 (Id.)
Plaintiff responds that this case does not warrant a patent prosecution bar
because “this dispute centers around a low-tech, publically available strapping
systems [sic] . . . and their advertising, sale and use in the marketplace. (Doc. 34,

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Defendant also argues that the situation involving Ms. Lippold Gummer entails an
“added risk” because she is married to Plaintiff’s Vice President/General Manager and coinventor of various grain storage cover patents. (Doc. 33, at 8.) The Court finds this fact, while
interesting, to be irrelevant to its analysis.
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at 1 (emphasis in original).) Plaintiff points out that Defendant “fails to identify
any specific information relevant to this patent infringement suit which would be
harmful if disclosed.” (Id., at 2.)
The Court agrees. Lawyers should not be precluded from litigating patent
cases “on the basis of a vague and generalized threat of future inadvertent misuse
of discovered materials and in the absence of specific evidence that Plaintiff's
counsel engages in competitive decision making.” Regal Beloit America, Inc. v.
Broad Ocean Motor LLC, No. 16-00111-JCH, 2017 WL 35702, at *3 (E.D.
Missouri, Jan. 4, 2017) (citing Clayton Corp. v. Momentive Performance
Materials, Inc., No. 12-1349-AGF, 2013 WL 2099437 at *4 (“Defendants have
not provided the Court with an affidavit, declaration, or any other form of evidence
on any issue related to the proposed prosecution bar ...”). Plaintiff correctly points
out that Defendant “fails to identify the types of documents comprising secret
technical information which it possesses that would be relevant to the suit and
require a patent prosecution bar to protect.” (Doc. 34, at 6.) Defendant has not
met its burden to establish good cause for the requested patent prosecution bar.
Defendant’s motion (Doc. 32) is, therefore, DENIED.

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IT IS THEREFORE ORDERED that Plaintiff’s Motion for Protective
Order (Doc. 30) is GRANTED in part and DENIED in part as more fully set
forth above.
IT IS FURTHER ORDERED that Defendant’s Motion for Entry of
Protective Order (Doc. 32) is DENIED.
IT IS SO ORDERED.
Dated this 18th day of July, 2017, at Wichita, Kansas.
S/ KENNETH G. GALE

HON. KENNETH G. GALE
U.S. MAGISTRATE JUDGE

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