Steuben Foods, Inc. v. GEA Process Engineering,Inc. et al

Filing 291

DECISION AND ORDER : The Motion 251 for Partial Reconsideration is granted and, upon reconsideration, the Court adheres to its prior rulings. SO ORDERED. Signed by Hon. Jeremiah J. McCarthy on 4/1/16. (DAZ)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK

STEUBEN FOODS, INC.,

DECISION and
ORDER
Plaintiff,

v.
12-CV-00904-EAW-JJM
GEA PROCESS ENGINEERING, INC.,
d/b/a GEA PROCOMAC and GEA
PROCOMAC S.p.A.,
Defendants.
Before me is defendants’ (collectively referred to as “GEA”) motion [251]1 for
partial reconsideration of my December 28, 2015 Decision and Order [242] granting in part and
denying in part their motion for protection [216]. For the following reasons, the motion for
partial reconsideration is granted and, upon reconsideration, I adhere to my prior rulings.

BACKGROUND
At the December 21, 2015 proceeding, I orally denied GEA’s motion for
protection to the extent it sought a prohibition against disclosure of privileged information in
response to Steuben Foods, Inc.’s (“Steuben’s”) Interrogatory No. 4, and a determination that
Steuben breached the Protective Order (GEA’s Memorandum in Support of their Motion for
Protection [216-1], pp. 6-8, 15-19), and later confirmed certain rulings in my December 28, 2015
Decision and Order [242]. GEA now seeks reconsideration of my decision denying these two
portions of its motion for protection.

1

Bracketed references are to the CM/ECF docket entries.

ANALYSIS
A.

Steuben’s Interrogatory 4
In opposition to GEA’s motion for protection, Steuben argued that Interrogatory

No. 4 was only seeking what GEA would otherwise be obligated to disclose in a privilege log.
Steuben’s Memorandum in Opposition [223], pp. 7-8. GEA responded that it was not obligated
to produce a privilege log for the responsive communications, since the parties had “agreed
that . . . privilege logs need only log privileged documents dated before the September 24, 2012
filing of this suit”. GEA’s Reply [218], p. 5 (citing a March 4, 2013 e-mail from its attorney
(Benjamin Kiersz) to Steuben’s attorney (Joseph Stanganelli) ([218-1], p. 3 of 4)). I rejected
GEA’s argument, concluding that “GEA’s unilateral e-mail” did not relieve it of its obligation to
provide a proper privilege log, and directed it to comply with that obligation. Decision and
Order [242], pp. 3-4.2
In seeking reconsideration, GEA points to the fact that my Decision and Order
overlooked that Mr. Stanganelli’s response to Mr. Kiersz’s March 4, 2013 e-mail stated “I think
your e-mail . . . is accurate” ([218-1], p. 2 of 4), which it argues establishes that the parties had
a bilateral agreement. GEA’s Memorandum in Support of their Motion for Reconsideration
[251-1], p. 2. To the extent I did not consider Mr. Stanganelli’s responding e-mail – a document
that GEA acknowledges it did not “pinpoint cite” to me - I will reconsider this portion of my
decision. Id., p. 5.

The sufficiency of GEA’s privilege log has been the subject of several proceedings since my
December 28, 2015 Decision and Order. See January 11, 2016 Text Order [245]; January 27, 2016 Text
Order [253]; transcript of the March 16, 2016 proceeding [286], pp. 5-15.
2

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However, even considering Mr. Stanganelli’s e-mail response, it still fails
to establish that the parties had reached a binding stipulation. As Steuben argued at the
October 23, 2015 oral argument ([225], pp. 29-32), and repeats in opposition to GEA’s motion
for reconsideration (Steuben’s Memorandum of Law [254], pp. 9-13), the stipulation is not
enforceable since there was no meeting of the minds.
“A stipulation represents an agreement between the parties to which there
has been mutual assent.” In re Nicholson Industries, Inc., 73 B.R. 266, 268 (Bankr. N.D. Ohio
1987). “Mutual assent requires, in turn, a meeting of the minds of the parties, and, if there is no
meeting of the minds on all essential terms, there is no contract.” Prince of Peace Enterprises,
Inc. v. Top Quality Food Market, LLC, 760 F. Supp. 2d 384, 397 (S.D.N.Y. 2011). “If a court
finds ambiguity in the words of the contract, the court then may consider extrinsic evidence to
determine the intent of the parties.” McNamara v. Tourneau, Inc., 464 F. Supp. 2d 232, 238
(S.D.N.Y. 2006). “An ambiguity exists where the terms of the contract could suggest more than
one meaning when viewed objectively by a reasonably intelligent person who has examined the
context of the entire integrated agreement and who is cognizant of the customs, practices, usages
and terminology as generally understood in the particular trade or business”. Law Debenture
Trust Co. of New York v. Maverick Tube Corp., 595 F.3d 458, 466 (2d Cir. 2010). “The burden
of establishing that the parties reached a meeting of the minds is on the party seeking to enforce
the [agreement].” Prince of Peace Enterprises, Inc., 760 F. Supp. 2d at 398.
Mr. Stanganelli stated at the October 23, 2015 proceeding that he believed from
their “one or two minutes” of discussion on this issue, that the parties’ agreement was a
“standard agreement”, applying to only attorney-client communications. October 23, 2015
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transcript [225], pp. 29-30. GEA responds that Mr. Stanganelli’s understanding “is contradicted
by the explicit and broad ‘privilege’ language in the parties’ written agreement”. GEA’s
Memorandum in Support of their motion for Reconsideration [251-1], p. 4.
However, GEA does not dispute that a “standard agreement” in these
circumstances is limited to attorney-client privileged communications. Nor does it contend that
the parties discussed - during their brief one or two minute discussion - the type or scope of
privileged communications that would be subject to the agreement. Therefore, I conclude that
GEA has failed to meet its burden of establishing that the parties reached a meeting on the
minds, and adhere to my original determination that GEA must provide a privilege log for any
communications it alleges are covered by the joint defense agreement.

B.

Protective Order
In its motion for protection, GEA sought to confirm that “(1) Steuben is

prohibited from taking any action or making any statement outside of this litigation if that action
or statement is based on confidential material subject to the Protective Order in this litigation
(absent specific authorization from this Court to do so), and (2) Steuben’s use of protective order
material from this case in GPNA’s IPRs breached this Court’s Protective Order”. GEA’s
Memorandum of Law in Support of their Motion for Protection [216-1], pp. 18-19. That portion
of the motion arises from a July 23, 2014 teleconference with the PTAB, during which Steuben’s
patent office counsel (Greg Gardella, Esq.) informed the PTAB that he was aware of a document
(that was marked highly confidential in this action), which was inconsistent with a position taken
by GEA in the PTAB proceeding. GEA’s Memorandum in Support of their Motion for
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Protection [216-1], p. 16. GEA argued that this violated the Protective Order, which prohibits
“referenc[ing] . . . information produced in [this action] in connection with any other litigation”.
Protective Order [51], ¶8.
Although not repeated in my December 28, 2015 Decision and Order [242],
during the December 21, 2015 proceeding I stated that “I’m not sanctioning anybody, I’m not
finding that anybody has or has not beached the protective order. I think thus far parties have
been generally conducting themselves in good faith. I will just remind all parties that they are
obligated to comply both with any protective order entered in any of these cases or by the
PTAB”. Transcript of the December 21, 2015 proceeding [240], p. 33.
In seeking reconsideration, GEA does not argue that I overlooked anything or
point to any additional facts or law. Instead, it “believes and fears that Steuben will interpret the
Court’s decision not to condemn Steuben’s misconduct as an endorsement of Steuben’s previous
misconduct and a license to continue to use GEA’s highly confidential material in other
proceedings or for purposes other than this litigation”. GEA’s Memorandum in Support of their
Motion for Reconsideration [251-1], p. 9. Therefore, it requests that I grant the relief sought in
its motion for protection, namely - find that Steuben breached the Protective Order and
admonish Steuben that it is prohibited from doing so in the future. Since my December 21, 2015
verbal ruling did not expressly conclude whether Steuben breached the Protective Order, I will
grant this portion of GEA’s motion for reconsideration.
When similar issues have arisen since Mr. Gardella’s disclosure July 2014
disclosure to the PTAB, the parties have raised them before me and I have directed what could
(or could not) be disclosed to the PTAB. See, e.g., December 21, 2015 Text Order [237]
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(“Steuben may inform the PTAB that it is moving as expeditiously as possible in two District
Court cases to seek modification of the protective orders in those cases to bring information to
the PTAB's attention that it believes is relevant”); January 27, 2016 Text Order [253] (“Steuben
may inform the PTAB that it has information that it believes is relevant and is seeking
permission in this action to present it to the PTAB”). While I would have preferred that a similar
process be followed prior to Mr. Gardella’s disclosure, since that disclosure generally comports
with the limited disclosures I have subsequently permitted Steuben to make to the PTAB, I
conclude that Steuben did not breach the Protective Order, and even if it could be construed as a
technical breach, its isolated and limited nature mitigates against the imposition of any sanctions.
Based on Steuben’s conduct in seeking my guidance prior to making subsequent disclosures to
the PTAB, and my continued belief that both parties are operating in good faith in complying
with their obligations under the Protective Order, I also find no reason to admonish Steuben of
its obligations under the Protective Order.
However, this is not an endorsement of Mr. Gardella’s disclosure or license for
the parties to use confidential material exchanged in this action in other proceedings. Whenever
questions arise about the scope of the Protective Order and whether (and to what extent)
confidential materials may be disclosed, used or referenced in other proceedings, including those
pending before the PTAB, I expect that the parties will continue to promptly bring these issues to
my attention prior to any dissemination.

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CONCLUSION
For these reasons, GEA’s motion for partial reconsideration [251] is granted and,
upon reconsideration, I adhere to my prior rulings

SO ORDERED.
Dated: April 1, 2016
/s/ Jeremiah J. McCarthy
Jeremiah J. McCarthy
United States Magistrate Judge

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