Cornelius et al v. Peterson et al

Filing 138

MEMORANDUM AND ORDER.. IT IS HEREBY ORDERED that the motion to modify or extend protective order (#130) is GRANTED to the extent set forth in this Order and the protective order is amended as set forth in this Order.. Signed by District Judge Stephen N. Limbaugh, Jr on 12/12/13. (MRS)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
SOUTHEASTERN DIVISION
CREATIVE COMPOUNDS, LLC,
Plaintiff,
v.
ADORNO & YOSS LLP, et al.,
Defendant.

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Case No. 1:09CV129 SNLJ

MEMORANDUM AND ORDER
This matter is before the Court on movant Lott & Friedland, P.A.’s Motion to Modify or
Extend Protective Order (#130). Movant seeks modification or extension of the protective order
entered in this case to enable movant to obtain documents covered by the protective order in
discovery in litigation between Creative Compounds, LLC and movant in the U.S. District Court,
Southern District of Florida. The matter has been fully briefed and is now ripe for disposition.
I.

Background
Plaintiff Creative Compounds, LLC brought this legal malpractice action alleging

mishandling of a number of patents by defendants Adorno & Yoss, LLP and Thomas L. Peterson
(Adorno Litigation). During the pendency of the Adorno Litigation, this Court entered a
Stipulated Protective Order Governing Confidential Information that governed documents and
information designated as confidential by the parties. Attorneys at Hinshaw & Culbertson, LLP
represented the defendants in the Adorno Litigation. The case was ultimately dismissed with
prejudice following a settlement.
While the Adorno Litigation was pending, Creative Compounds filed a legal malpractice
action alleging mishandling of a patent for a “shaker cup” against Lott & Friedland, P.A.

(“L&F”). That case was originally filed in the Circuit Court of Scott County, removed to this
Court, and then transferred to the U.S. District Court, Southern District of Florida where it is
currently pending (L&F Litigation). As the L&F Litigation has proceeded, L&F has undertaken
discovery as to the issue of the date of the first sale of the shaker cup, which L&F believes may
be dispositive in that case. According to L&F, discovery has revealed that there were discussions
regarding the shaker cup, including an offer to sell and a sale, during the time Adorno & Yoss
represented Creative Compounds. As a result, L&F believes that there may be testimony and
discovery in the Adorno Litigation relative to the shaker cup and, as such, the information would
be relevant to the L&F Litigation, or, would lead to the discovery of relevant and admissible
information.
L&F served a subpoena duces tecum and deposition notice on the records custodian of
Hinshaw & Culbertson seeking discovery materials and deposition testimony obtained in the
Adorno Litigation for use in the L&F Litigation. L&F has not been able to obtain the discovery
because the documents sought in the subpoena duces tecum were designated as confidential
subject to the Adorno Litigation protective order. According to L&F, Hinshaw and Culbertson
and George Yoss, former managing partner at Adorno & Yoss, have no objection to production
of the requested documents but are prohibited from producing them because of the protective
order. Creative Compounds objects to the production of the documents covered by the protective
order. L&F now seeks to to modify or extend the protective order so that Hinshaw & Culbertson
may disclose the documents in response to a subpoena duces tecum in the L&F Litigation.
II.

Legal Standard
“As long as a protective order remains in effect, the court that entered the order retains

the power to modify it, even if the underlying suit has been dismissed.” United Nuclear Corp. v.

Cranford Ins. Co., 905 F.2d 1424, 1427 (10th Cir. 1990); see also National Ben. Programs, Inc.
v. Express Scripts, Inc., 4:10CV907 AGF, 2011 WL 6009655, at *4 (E.D. Mo. Dec. 1, 2011)
(citing Abraham v. Intermountain Health Care, Inc., 461 F.3d 1249, 1268 (10th Cir. 2006)
(holding that as long as protective order remains in effect, the court that entered the order retains
the power to modify it, even if the underlying suit is dismissed)). It is within the court’s
discretion whether to amend or modify a protective order. United Nuclear Corp., 905 F.2d at
1427; see also Iowa Beef Processors, Inc. v. Bagley, 601 F.2d 949, 955 (8th Cir. 1979) (holding
that lifting a protective order is a discretionary decision for the trial court).
The standards for modifying a protective order at the request of a collateral litigant have
been addressed by the Seventh Circuit in Wilk v. American Medical Ass’n, 635 F.2d 1295 (7th
Cir. 1980), the Tenth Circuit in United Nuclear Corp. v. Cranford Ins. Co., 905 F.2d 1424 (10th
Cir. 1990), and the Ninth Circuit in Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1122 (9th
Cir. 2003). In Foltz, the Ninth Circuit held that “[w]here reasonable restrictions on collateral
disclosure will continue to protect an affected party’s legitimate interests in privacy, a collateral
litigant’s request to the issuing court to modify an otherwise proper protective order so that
collateral litigants are not precluded from obtaining relevant material should generally be
granted.” Foltz, 331 F.3d at 1131-32. The Seventh and Tenth Circuits have held that “where an
appropriate modification of a protective order can place private litigants in a position they would
otherwise reach only after repetition of another’s discovery, such modification can be denied
only where it would tangibly prejudice substantial rights of the party opposing modification.”
United Nuclear Corp., 905 F.2d at 1428; Wilk, 635 F.2d at 1299. Further, the Seventh and Tenth
Circuits have instructed that “[o]nce such prejudice is demonstrated, however, the district court

has broad discretion in judging whether that injury outweighs the benefits of any possible
modification of the protective order.” Id.
This Court finds the foregoing standards for modification of a protective order at the
request of a collateral litigant to be sound. With these principles in mind, the Court turns to the
discussion.
III.

Discussion
Pursuant to the terms of the protective order in this case, the order remains in full force

and effect and this Court retains jurisdiction to enforce or modify the provisions of the protective
order after the termination of the case. L&F requests that this Court modify and expand the
protective order to bring L&F within the scope of the order to permit Hinshaw & Culbertson to
produce documents in response to the subpoena duces tecum in the L&F Litigation. L&F claims
that but for the protective order in this case, Creative would have no right or basis to object to the
production of the documents it has requested in the L&F Litigation and the documents would
have been produced. Creative Compounds opposes the motion to modify or extend the protective
order and opposes the production of the documents on the grounds that it believes some of the
documents are subject to the attorney-client privilege, the documents requested are not relevant
because the Adorno Litigation did not involve the shaker cup, the discovery deadline in the L&F
Litigation has expired, and it would be unduly burdensome for it to review the voluminous
records to find any relevant documents.
This Court does not have specific knowledge with regard to the specific documents that
were covered by the protective order in this case. The protective order was a blanket protective
order extending broad protection to all documents produced without a showing of good cause for
confidentiality as to any individual documents. Such blanket protective orders are by nature

overinclusive and are, therefore, particularly subject to later modification. Public Citizen v.
Liggett Group, Inc., 858 F.2d 775, 790 (1st Cir. 1988). It is undisputed that Adorno & Yoss
represented Creative Compounds during the time that it was developing the shaker cup and
during the time that it first sold the shaker cup – whether that date of sale is the date alleged by
Creative Compounds or the date alleged by L&F. As a result, any documents produced in this
case within the protections of the protective order that relate to the shaker cup are certainly
relevant to the L&F Litigation. L&F should not be precluded from obtaining any documents
relevant to the L&F Litigation because of the protective order in this case. Clearly, however, not
all of the documents in the Adorno Litigation are relevant to the L&F Litigation because
different patents were at issue.
This Court will grant the motion to modify or extend the protective order to a limited
extent. The protective order is amended to enlarge the class of individuals who may gain access
to “Confidential Information” as designated in the protective order to include L&F and
associated individuals who work on the L&F Litigation with L&F, subject to the terms and
obligations of the protective order, but only to the extent that the “Confidential Information”
relates to the shaker cup and the L&F Litigation. Further, the protective order is amended to
allow the parties to the protective order to produce documents covered by the protective order to
L&F as ordered by the District Court in the L&F Litigation.
In amending the protective order, this Court does not decide whether movant will
ultimately obtain the discovery materials. The objections raised by Creative Compounds as to
whether some of the documents are subject to the attorney-client privilege, whether the
documents are relevant, that the discovery deadline in the L&F Litigation has expired, and that it
would be unduly burdensome for it to review the voluminous records are objections to be

brought in the L&F Litigation. This Court is not in a position to impose any affirmative
requirements on the parties relating to discovery. United Nuclear Corp., 905 F.2d at 1428. The
disputes over the ultimate discoverability of the specific materials covered by the protective
order must be resolved by the District Court in the Florida litigation. Id. With the protective
order amended, the Florida District Court may freely control the discovery controversies before
it without running up against the protective order of another court.
To be clear, this Court amends the protective order only to the extent that the protective
order is a bar to the disclosure of documents that relate to the shaker cup in the L&F Litigation
and any orders related to discovery issued by the District Court in the L&F Litigation. To the
extent that any documents covered by the protective order are disclosed in the L&F Litigation,
this Court amends the protective order such that L&F is bound by the terms and obligations of
the protective order. Further, the protective order is amended to permit movant and Creative
Compounds to employ any documents disclosed in accordance with the foregoing in the L&F
Litigation, subject to the terms and obligations of the protective order, and, in accordance with
the rulings and orders of the District Court in that litigation.
Accordingly,
IT IS HEREBY ORDERED that the motion to modify or extend protective order (#130)
is GRANTED to the extent set forth in this Order and the protective order is amended as set
forth in this Order.
Dated this 12th day of December, 2013.

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STEPHEN N. LIMBAUGH, JR.
UNITED STATES DISTRICT JUDGE