Uni-Systems, LLC v. United States Tennis Association, Inc. et al
MEMORANDUM AND ORDER. For the reasons set forth in the written opinion, 97 Plaintiff's Motion to Compel is granted in part, 101 Defendant's Letter Motion to Compel is denied, and 108 Petersen's Motion for Reconsideration is deni ed without prejudice. The stay of discovery is lifted. The parties shall submit a joint status report and proposed discovery plan addressing the items listed in Fed. R. Civ. P. 26(f)(3) by September 29, 2017. A telephone conference has been scheduled before the undersigned for October 4, 2017 at 1:00 p.m. The parties shall provide the Court with dial-in instructions as part of their joint status report. See full written opinion for details. So Ordered by Magistrate Judge Cheryl L. Pollak on 9/13/2017. (Blase, Brendan)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
MEMORANDUM AND ORDER
17 CV 147 (KAM) (CLP)
-againstU.S. TENNIS ASSOCIATION, et al.,
POLLAK, United States Magistrate Judge:
Plaintiff Uni-Systems, LLC brings this action against the United States Tennis
Association, Inc. (“USTA”), Rossetti, Inc. (“Rossetti”), Hunt Construction Group, Inc. (“Hunt”),
Hardesty & Hanover LLC and Hardesty & Hanover LLP (collectively referred to in the
Complaint and throughout the proceedings as “Hardesty & Hanover”), Morgan Engineering
Systems, Inc. (“Morgan”), and Geiger Engineers, P.C. (collectively, “defendants”), asserting a
variety of patent infringement claims against all defendants, as well as trade secret claims and an
unfair competition claim against Hardesty & Hanover and Hunt Construction (the “Trade Secret
Defendants”), all flowing from defendants’ involvement in the construction and maintenance of
certain retractable stadium roofs. (See Compl., ECF No. 1).
On September 6, 2017, the parties appeared before the undersigned for a status and
hearing to address several discovery disputes.
Beginning in April 2017, the parties, at the Court’s direction, engaged in limited
discovery to facilitate settlement discussions. (See Order, Apr. 20, 2017, ECF No. 80). On July
19, 2017, the Court held a settlement conference. At the conclusion of the conference, the Court
addressed a number of discovery disputes that had been raised and instructed the parties to meet
and confer to narrow these disputes if they continued to be unable to negotiate a settlement. (See
Minute Entry, ECF No. 92).
On August 10, 2017, the parties advised the Court that they had been unable to negotiate
a settlement and that they disagreed as to how the case should proceed. (See Joint Status Report,
ECF No. 96). The parties subsequently submitted letters to the Court, raising unresolved
discovery issues, which disputes were addressed during the September 6th conference. Among
other issues, plaintiff contends that the defendants have refused to provide information requested
in discovery and have instead interposed meritless objections. (See Pl.’s Letter, Aug. 10, 2017,
ECF No. 97). For their part, the Trade Secret Defendants, Hardesty & Hanover and Hunt
Construction Group, Inc., move to compel more specific interrogatory responses from UniSystems, before the defendants provide discovery about their own technology. (Letter Mot. to
Compel, Aug. 25, 2017, ECF No. 101).
Based on the discussion during the September 6, 2017 hearing, the Court issued the
A. Petersen’s Motion for Admission Pro Hac Vice
On August 31, 2017, David Pollack of Lewis Brisbois Bisgaard and Smith LLP, counsel
for Rossetti, moved to admit Maxwell J. Petersen, an attorney admitted to practice in the State of
Illinois, to this Court’s bar pro hac vice. (See Petersen PHV Mot., Aug. 31, 2017, ECF No. 106).
The Local Rule that governs the admission of attorneys pro hac vice to this Court’s bar provides,
in relevant part:
A member in good standing of the bar of any state or of any United
States District Court may be permitted to argue or try a particular
case in whole or in part as counsel or advocate, upon motion (which
may be made by the applicant) and (1) upon filing with the Clerk of
the District Court a certificate of the court for each of the states in
which the applicant is a member of the bar, which has been issued
within thirty (30) days of filing and states that the applicant is a
member in good standing of the bar of that state court, and an
affidavit by the applicant stating (a) whether the applicant has ever
been convicted of a felony, (b) whether the applicant has ever been
censured, suspended, disbarred or denied admission or readmission
by any court, (c) whether there are any disciplinary proceedings
presently against the applicant and (d) the facts and circumstances
surrounding any affirmative responses to (a) through (c); and (2)
upon paying the required fee. Attorneys appearing for the
Department of Justice may appear before the Court without
requesting pro hac vice admission. . . . Only an attorney who has
been so admitted or who is a member of the bar of this Court may
enter appearances for parties, sign stipulations or receive payments
upon judgments, decrees or orders.
E.D.N.Y. L. Civ. R. 1.3(c). The Clerk of Court posts compliant model forms, including a motion
and affidavit, on the Court’s website. (See Clerk of Court, PHV Forms & Instructions, U.S.
District Court, E.D.N.Y., https://www.nyed.uscourts.gov/forms/all-forms/phv (last visited Sept.
11, 2017)). In addition to the Local Rule, the undersigned’s Individual Rules of Practice require
the moving attorney to provide a proposed order for admission pro hac vice. (See Cheryl L.
Pollak, Individual Rules of Practice, https://img.nyed.uscourts.gov/rules/CLP-MLR.pdf (April
Mr. Petersen submitted an affidavit in connection with his motion for pro hac vice
admission, which stated that he is a member in good standing of the bar of Illinois. (See Petersen
Aff., ECF No. 106-1). However, the affidavit failed to comply with the Local Rule because it
did not state whether Mr. Petersen had ever been convicted of a felony, see L. Civ. R.
1.3(c)(1)(a), and did not indicate whether he had ever been disciplined in the past; it merely
stated that “there are no pending disciplinary proceedings.” See id. 1.3(c)(1)(b). On August 31,
2017, the Court denied the pro hac vice motion “without prejudice to renew upon the submission
of an affidavit that conforms to the Local Rule.” (Order Denying PHV Mot., Aug. 31, 2017,
ECF No. 107).
On September 5, 2017, Mr. Pollack submitted a corrected affidavit from Mr. Petersen in
connection with his Motion for Reconsideration of the Order denying admission without
prejudice. (See Petersen Mot. for Recons., Sept. 5, 2017, ECF No. 108). Although counsel
corrected certain errors in the affidavit, they failed to submit a proper proposed order. The
proposed order submitted with the September 5th filing was incorrect because it listed the fee
required by the Clerk of the Court as $25.00 (see Proposed Order, ECF No. 106-3), when the
admission fee set by the Board of Judges for this District is actually $150.00. (See E.D.N.Y.
A.O. 2014-11, Dec. 23, 2014).
At the September 6, 2017 hearing, Mr. Pollack acknowledged the error and advised the
Court that he would submit a corrected proposed order. (See Tr. 4:5-4:22, Sept. 6, 2017).
Despite Mr. Pollack’s assurances that the matter would be handled, Mr. Petersen called the
Court’s clerk on September 7, 2017, asking why the Court had not entered an order granting his
admission pro hac vice. Apparently Mr. Petersen, who did not attend the September 6th
conference, was not informed that the matter had been raised, and that counsel had been directed
to submit a new order.
“The court routinely grants attorneys who practice elsewhere the courtesy of representing
clients who find themselves in litigation in this court.” Spirit Locker, Inc. v. Evo Direct, LLC,
No. 09-CV-1582, 2009 WL 1449062, at *1 (E.D.N.Y. May 22, 2009). By failing to review the
Court’s simple rules carefully, Mr. Pollack and Mr. Petersen have transformed this routine matter
into one that has required an inordinate amount of time and attention by the Court. Admission
pro hac vice “is a privilege rather than a right[.]” Id. (citing Leis v. Flynt, 439 U.S. 438, 441-42
(1979)). One important consideration for the Court in determining whether to extend that
privilege is whether an attorney provides “some reasonable assurances that [he is] familiar with
the Local Rules and this Court’s Individual Rules.” United States v. International Broth. of
Teamsters, Chauffeurs, Warehousemen & Helpers of Am., 911 F. Supp. 743, 754 (S.D.N.Y.
1996). An attorney’s failure to follow straightforward rules in seeking admission pro hac vice
may undermine the Court’s confidence that such an attorney will comply with the duties and
responsibilities attendant to such admission. The Court mentions this not because Mr. Pollack
and Mr. Petersen are unique in their failure to adhere to the Local Rules, but because such a
discussion is necessary given the frequency of such inattentiveness that regularly consumes the
The Court therefore denies the Motion for Reconsideration (ECF No. 108) without
prejudice to renewal once a compliant proposed order has been submitted.
B. Discovery Disputes
Federal Rule of Civil Procedure 26 provides that “[p]arties may obtain discovery
regarding any nonprivileged matter that is relevant to any party’s claim or defenses and
proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). Such discovery may proceed
“in any sequence,” and “discovery by one party does not require any other party to delay its
discovery.” Fed R. Civ. P. 26(d)(3). The Court possesses significant discretion, however, to
limit discovery “to protect a party or person from annoyance, embarrassment, oppression, or
undue burden or expense” upon a showing of good cause, Fed. R. Civ. P. 26(c)(1), or to modify
the sequence or timing of discovery “for the parties’ and witnesses’ convenience and in the
interests of justice,” Fed. R. Civ. P. 26(d)(3).
2. The Parties’ Cross-Motions to Compel
Both the plaintiff and the defendants (primarily the Trade Secrets Defendants) have
presented discovery disputes to the Court.
Uni-Systems seeks to compel interrogatory responses from all defendants. (See Pl.’s
Letter, Aug. 10, 2017, ECF No. 97). The defendants have interposed various objections to
plaintiff’s interrogatories, but primarily they argue that Uni-Systems has failed to identify its
alleged trade secrets with sufficient particularity to allow defendants to respond. (See Trade
Secret Defs.’ Resp. to Pl.’s Letter at 1, Aug. 15, 2017, ECF No. 98). Defendants also claim that
they previously produced “all information and detailed drawings of every aspect of the Arthur
Ashe Stadium roof.” (Id. at 3). Thus, they contend that the interrogatories essentially “ask
Defendants to make Uni-Systems’ trade secret case for it.” (Id.) Finally, with respect to
interrogatory number 4, defendants argue that the interrogatory incorporates by reference UniSystems’ own discovery responses, which were marked “Highly Confidential – Outside
Attorneys’ Eyes Only,” thereby precluding defendants’ personnel from seeing the interrogatory
and making it impossible to verify any response. (See id.)
The Trade Secret Defendants bring a related motion to compel Uni-Systems to provide
more complete responses to their interrogatories. (Trade Secret Defs.’ Letter Mot. to Compel,
Aug. 25, 2017, ECF No. 101). Specifically, the Trade Secret Defendants contend that “UniSystems is required by law (and also by common sense) to identify its asserted trade secrets
‘with specificity’ before requiring Defendants to provide discovery regarding their own accused
technology.” (Id. at 1). They complain that when asked to list the trade secrets at issue in this
case, Uni-Systems provided insufficient responses that lack particularity and amount to mere
“categories of information.” (Id. at 2). In support of this argument, defendants attach under seal
a copy of Uni-Systems’ responses, consisting of 36 pages describing its trade secrets, that
defendants have annotated with 52 questions they would like answered to provide requisite
specificity. (See Sealed Ex. to Defs.’ Mot., Aug. 28, 2017, ECF No. 104). In response, UniSystems argues that that its responses are full and complete and that the defendants
mischaracterize the standard for trade secret discovery. (Pl.’s Resp. in Opp’n at 1-2, Aug. 30,
2017, ECF No. 105). Uni-Systems also observes that defendants are not entitled to abstain from
discovery simply because they desire more information from the plaintiff. (Id.)
Cases involving trade secrets claims follow the normal procedures set by the Federal
Rules; however, courts have universally recognized that defining the scope of discovery in trade
secrets cases can be particularly difficult, because there is highly sensitive information and
proprietary concerns on both sides. See, e.g., DeRubeis v. Witten Techs., Inc., 244 F.R.D. 676,
679 (N.D. Ga. 2007); see generally Kevin R. Casey, Identification of Trade Secrets During
Discovery: Timing & Specificity, 24 AIPLA Q.J. 191 (1996).
To address the scope of discovery in such cases, federal courts regularly require trade
secrets plaintiffs to identify alleged trade secrets with “reasonable particularity.” See, e.g.,
DeRubeis v. Witten Techs. Inc., 244 F.R.D. 676, 681 (N.D. Ga. 2007). Although definitions
vary, that standard generally requires that the plaintiff provide enough information about the
alleged trade secrets (1) to put the defendant on notice of the nature of plaintiff’s claims, and
(2) to allow defendant to discern the relevancy of any discovery requests. Id.; accord Switch
Commc’ns Grp. v. Ballard, No. 2:11-cv-00285, 2012 WL 2342929 (D. Nev. June 19, 2012).
The standard is flexible and is driven by the Court’s discretion. Courts have recognized
that a very general showing may be sufficient, particularly in the common scenario where the
trade secrets plaintiff may not know which parts of its trade secrets have been misappropriated or
cannot determine the full scope of its claims until it gains a better understanding of how a
defendant operates. See Vesta Corp. v. Amdocs Mgmt. Ltd., 147 F. Supp. 3d 1147, 1154 (D. Or.
2015) (quoting DeRubeis v. Witten Techs., Inc., 244 F.R.D. at 680). Thus, the strength of the
showing sufficient to identify trade secrets with sufficient particularity varies with the facts and
stage of the case. See Storagecraft Tech. Corp. v. Symantec Corp., No. 2:07 cv 856 CW, 2009
WL 361282, at *2 (D. Utah Feb. 11, 2009). It is clear, however, that generic descriptions of
categories are insufficient to provide defendants with information sufficient to satisfy the
“reasonable particularity” standard. See Knights Armament Co. v. Optical Sys. Tech., Inc., 254
F.R.D. 463, 467 (M.D. Fla. 2008).
Here, Uni-Systems has provided 36 pages describing their alleged trade secrets. After
reviewing the responses, the Court concludes that these are not, as defendants contend, mere
categories, but actually detailed descriptions of the alleged trade secrets. (See Tr. 70:9-23). UniSystems has therefore met its burden at this point in the litigation of describing its alleged trade
secrets with reasonable particularity. The information they have provided informs the
defendants of the nature of plaintiff’s claims and allows them to determine the relevancy of
discovery requests. Most of the defendants have answered the Complaint, suggesting an ability
to defend the action, and the Trade Secret Defendants were able to discern enough information
about the alleged trade secrets to draft 52 follow-up questions for which they would like more
detail. Indeed, many of the arguments made at the hearing by counsel for the USTA and Hunt
had no bearing on the availability of discovery, but instead related to the merits of whether
plaintiff’s information constitutes a trade secret. (See, e.g., Tr. 34:21-35:11, 35:22-25).
However, the requirement of reasonable particularity “does not create a procedural device to
litigate the ultimate merits of the case—that is, to determine as a matter of law on the basis of
evidence presented whether the trade secret actually exists.” Prolifiq Software, Inc. v. Veeva
Sys., Inc. No. C 13-03644, 2014 WL 2527148, at *3 (N.D. Cal. June 4, 2014) (discussing a
similar requirement imposed by statute under Cal. Civ. Proc. Code § 2019.219) (quotations and
The Court finds that Uni-Systems has identified its trade secrets with reasonable
particularity, and therefore, the Trade Secret Defendants’ Motion to Compel more specific
responses is denied. 1
While the Uni-Systems’ definitions of its trade secrets may satisfy the “reasonable
particularity” requirement, these definitions may not be sufficiently specific to allow defendants
to provide complete and discrete answers to plaintiff’s interrogatories. Although Uni-Systems is
entitled to further discovery from the defendants, the current interrogatories, as phrased, are
entirely too broad, too unwieldy, and do not lend themselves to discrete responses. Indeed, as
defendants point out, under the restrictions in the protective order relating to disclosure of certain
information to the parties’ employees, it may be difficult to verify the responses under oath
without disclosing the alleged trade secrets to the verifying employee.
The Court observes that the primary cases upon which defendants relied arose after extensive
discovery and in the context of motions for summary judgment. See, e.g., Big Vision Private
Ltd. v. E.I. DuPont de Nemours & Co., 1 F. Supp. 3d 224 (S.D.N.Y. 2014). Such cases are of
little relevance at this early stage of the proceedings, but these decisions provide an important
warning that a plaintiff who fails to take advantage of discovery to develop fully a sufficient
description of its alleged trade secrets may be unable to meet a heightened particularity
requirement after discovery that would be sufficient to withstand summary judgment.
Accordingly, the Court ordered plaintiff to redraft its interrogatories to allow for discrete
answers and to meet and confer with the defendants regarding the proposed re-phrasing of UniSystems’ current interrogatories. In lieu of interrogatories, the Court also suggested that plaintiff
consider conducting depositions since the interrogatories at issue seek narrative answers that are
often more suitable to a deposition format. The parties were also directed to confer on a
mechanism that would allow the parties to provide verified responses to the discovery requests
without violating the protective order. One suggestion was to have defendants designate a
specific employee who could be read into and asked to sign the protective order.
3. Production of Morgan’s Source Code
Uni-Systems seeks production of defendant Morgan’s source code. Morgan argues that
because the misappropriation of trade secrets claims in the Complaint are directed at other
parties, plaintiff’s request for production of the source code is “best thought of to be analogous to
a third-party subpoena.” (Tr. 47:14-15). Morgan further argues that any trade secrets found in
the source code could only have come from the Trade Secret Defendants and not from any other
source. (See id. at 47:16-48:15). Thus, Morgan contends that production of documents
exchanged among the defendants should be sufficient, and that if no trade secrets are conveyed
in these written communications, there is no need to review Morgan’s source code for plaintiff’s
trade secrets. (See id.)
Morgan’s argument that it should be treated as a non-party for purposes of this discovery
ignores the clear language of Rule 26, which provides that “[p]arties may obtain discovery
regarding any nonprivileged matter that is relevant to any party’s claim or defense[.]” Fed. R.
Civ. P. 26(b)(1) (emphasis added). The Rule does not distinguish among parties against whom
various causes of action are asserted. It is true that the Court “may, for good cause, issue” a
protective order, Fed. R. Civ. P. 26(c)(1), but that Rule is permissive and, as explained below,
Morgan has failed to demonstrate good cause for such an order at this time.
Furthermore, Morgan has provided no support for its contention that the written
exchanges among defendants are the only possible way that Uni-Systems’ trade secrets could
have been conveyed to Morgan and thereby incorporated into the source code. (Id. at 48:2249:22). Indeed, Morgan admits that it has produced only two documents to Uni-Systems.
What is more important, however, is that the source code is necessary to understanding
how all of the defendants’ various systems operate in practice. Plaintiff’s counsel argues
forcefully that “[t]here [i]s no question that [Morgan’s] input on how the stadium – on how this
roof works is front and center of the trade secret dispute in this case” (Tr. 13:1-4), and that “[i]t
is the best evidence of how the system works.” (Id. at 60:12-13). In arguing the need for more
specific information from plaintiffs, defendants actually concede that a component that may not
itself constitute a trade secret may receive trade subject protection when operated a certain way
or in conjunction with various components. Thus, the information contained in Morgan’s source
code is at the heart of the dispute in these proceedings.
Morgan attempts to avoid that reality by arguing that disclosure of its code would not be
proportional to the needs of this case. (See, e.g., Tr. 85:9-17). In making this conclusory
argument, however, Morgan failed at the hearing to offer any concrete explanation for how
production of the source code would not be proportional to the needs of this case, especially
given that plaintiff has already produced its own source code. By contrast, the Court is
persuaded by the argument that the source code is critical to an understanding of how
defendants’ system works. See Fed. R. Civ. P. 26(b)(1) (instructing courts determining whether
discovery is proportional to consider, among other factors, “the importance of the discovery in
resolving the issues”).
In the absence of any articulated reason why the source code cannot be adequately
protected under the confidentiality and protective order proposed by the parties, the Court rejects
Morgan’s proportionality argument and orders the parties to meet and confer regarding an ESI
protocol. Morgan is Ordered to produce the source code once the parties revise their proposed
protective order and it has been entered by the Court. 2
4. Lifting the Stay of Discovery
The Court lifts the stay on discovery. (See Tr. 50:22-25). The parties are directed to
submit a proposed discovery plan to the Court within fourteen (14) days. The proposed
discovery plan should address the points set forth in Fed. R. Civ. P. 26(f)(3), as well as the
questions set forth in the undersigned’s individual practices.
C. The Parties’ Proposed Protective Order
The parties have submitted a stipulated proposed protective order. (ECF No. 100). At
the status conference, the Court reviewed its concerns regarding the proposed protective order.
Specifically, the Court observed that the proposed protective order as drafted placed the
procedural burden of seeking court approval for sealing on the party seeking to use the
document, rather than on the party who produced the document under seal in the first instance.
The Court reminded the parties that under the Federal Rules, the burden remains on the
producing party which is seeking to prevent disclosure of the information, to demonstrate “good
By letter dated September 13, 2017, Morgan represents that it is preparing the source code and
will make it available to Uni-Systems once the parties agree on the terms of a protective order.
(See Morgan Letter, Sept. 13, 2017, ECF No. 113).
cause” to the Court for filing a document under seal. See Fed. R. Civ. P. 26(c)(1); Cumberland
Packing Corp. v. Monsanto Corp., 184 F.R.D. 504, 505 (E.D.N.Y. 1999) (citing In re Agent
Orange Prod. Liab. Litig., 821 F.2d 139, 145 (2d Cir. 1987)). Similarly, regardless of the
parties’ agreement, the Court has an independent responsibility to protect the public’s right to
access, and ensure that good cause for sealing exists in order to vindicate the public’s interest in
monitoring court proceedings. See Cumberland Packing Corp. v. Monsanto Corp., 184 F.R.D. at
The parties are therefore ordered to meet and confer for the purpose of revising the
proposed protective order in light of the developments at the hearing and the concerns expressed
in this opinion. They shall submit a revised proposed protective order within fourteen (14) days.
D. Case Management
1. ESI Order/Protocol
To date the parties have exchanged limited paper discovery to facilitate settlement
discussions. Now that the Court has lifted the discovery stay, the parties are directed to meet and
confer to develop an ESI protocol and order, after which they may begin to conduct discovery of
electronically stored information.
The Court previously directed the parties to agree on a procedure to allow for an
inspection of the USTA’s premises and the allegedly misappropriated technology. As of the date
of the hearing, the parties had not been able to arrange an inspection. They are therefore ordered
to discuss any requested inspection, including the scope and timing of any such inspection, at
their meet and confer and to advise the Court of their agreement or to present the Court with any
The parties have suggested that this is a case in which the presumptive limit of seven
hours for a deposition under Fed. R. Civ. P. 30(d)(1) will be insufficient. The Court agrees. (See
Tr. 83:9-23). The parties shall confer and agree on the length of each deposition. Any disputes
shall be brought to the Court’s attention promptly.
4. Status Report and Telephone Conference
The parties shall submit a joint status report to the Court no later than September 29,
2017. A telephonic status conference is scheduled for Wednesday, October 4, 2017 at 1:00
p.m. The parties shall arrange for a teleconference number and shall provide the Court with dialin instructions as part of the join status report.
For the reasons discussed above, plaintiff’s Letter Motion to Compel (ECF No. 97) is
granted in part; the Trade Secret Defendants’ Letter Motion to Compel (ECF No. 101) is denied;
and the Motion for Reconsideration of the Order on Mr. Petersen’s Motion for Admission pro
hac vice (ECF No. 108) is denied without prejudice. The stay of discovery is lifted. The parties
shall submit a joint status report and proposed discovery plan addressing the items listed in Fed.
R. Civ. P. 26(f)(3) by September 29, 2017. A telephone conference has been scheduled before
the undersigned for October 4, 2017 at 1:00 p.m. The parties shall provide the Court with dialin instructions as part of their joint status report.
The Clerk is directed to send copies ofthis Memorandum and Order to the parties either
electronically through the Electronic Case Filing(ECF)system or by mail.
Dated: Brooklyn, New York
September 13, 2017
/s/ Cheryl L. Pollak
Cheryl L. P^/ak
United StatM Magistrate Judge
Eastern District of New York
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