Ethicon Endo-Surgery, Inc. v. Covidien, Inc.

Filing 47

STIPULATED PROTECTIVE ORDER. Signed by Judge Timothy S. Black on 6/21/12. (mr1)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

ETHICON ENDO-SURGERY, INC.
Plaintiff,
v.
COVIDIEN, INC.
Defendant.

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Civil Action No. 1:11-cv-871

Judge Timothy S. Black

STIPULATED PROTECTIVE ORDER
WHEREAS discovery in this action may involve the disclosure of certain
documents, things, and information in the possession, custody or control of plaintiff Ethicon
Endo-Surgery, Inc. (“Plaintiff”), defendant Covidien, Inc., (“Defendant”), or other non-parties
that constitute or contain trade secrets or other confidential research, development or commercial
information within the meaning of Rule 26(c)(1) of the Federal Rules of Civil Procedure (“Fed.
R. Civ. P.);
WHEREAS, such confidential information must be protected in order to preserve
the legitimate interests of the parties or other such persons;
WHEREAS Plaintiff and Defendant have, through counsel, stipulated to the entry
of this Protective Order for the purposes of advancing the progress of this case to prevent
unnecessary dissemination or disclosure of such confidential information, and
WHEREAS the parties have established good cause for entry of this Order:
IT IS HEREBY ORDERED that:

5215966v.1

Definitions
1.

For purposes of this Order:

(a)

The term “Confidential Information” includes only non-public information

that the designating party reasonably believes in good faith constitutes or reveals proprietary or
confidential trade secret, technical, business, financial, or personal information of the designating
party for which the designating party could obtain a protective order against general
dissemination.
(b)

The term “Highly Confidential Information” includes only non-public

information that the designating party reasonably believes in good faith constitutes or reveals
highly sensitive information, which if disclosed to persons of expertise in the area would be
likely to reveal meaningful technical or business advantages of the designating party, including
but not limited to: proprietary customer, supplier, and distributor information; sensitive financial
data;, marketing and business plans or strategies for existing or new products or processes; and
ongoing research and development for existing or new products or processes, Highly
Confidential information is rebuttably presumed to exclude information that, although it may
have at a previous time, no longer constitutes or reveals highly sensitive information due to the
passage of time, and information that discloses or reveals information that an expert could
discern through use, examination, reverse engineering, or public description of an existing
product. The parties shall take care to only designate information that properly falls under the
above definition as Highly Confidential.
(c)

The term “Protected Information” shall mean information designated as

containing or comprising Confidential or Highly Confidential Information pursuant to the
provisions of this Order. It shall apply to all information, documents and things within the scope
of discovery in this action, that are in the custody or possession of, or are owned or controlled

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by, Plaintiff, Defendant, or other non-parties, including, without limitation, documents and
things produced pursuant to Rules 26, 33, 34, or 36 of the Fed. R. Civ. P.; any other information
produced pursuant to discovery requests or disclosure requirements of the Court’s scheduling
order; information produced by other persons which the producing or designating party is under
an obligation to maintain in confidence; testimony adduced at depositions upon oral examination
or upon written questions pursuant to Rules 30 and 31 of the Fed. R. Civ. P., hearings or trial; as
well as any other tangible things or objects that are designated as containing or comprising
Confidential or Highly Confidential Information. The information contained therein and all
copies, abstracts, excerpts, analyses or other writings that contain, reflect, reveal, suggest or
otherwise disclose such information shall also be deemed Protected Information. Information
originally designated as Protected Information shall not retain that status after any ruling by the
Court denying such status to it.
(d)

The term “designating party” means the party or person designating

documents or information as Protected Information under this Order.
(e)

The term “receiving party” shall mean the party or person to whom

Protected Information is disclosed.
(f)

Notwithstanding anything to the contrary herein, the description of

Protected Information shall apply to all that information so designated by the designating party
absent an order of the Court or subsequent written agreement of the designating party providing
otherwise.
Designation of Confidential Information or Highly
Confidential Information as Protected Information
2.

Each designating party who produces or discloses any material that it

believes contains or comprises Confidential or Highly Confidential Information shall

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designate the same as Protected Information. With respect to documents or copies
provided by one party to the other, the designating party shall prominently mark the
initial page and the page or pages on which any Protected Information appears with the
legend “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL” as the case may be. In the
event a party may make available certain of its files for inspection by another party,
which files may contain non-confidential material as well as material that may be subject
to protection under this Protective Order, with the intent that following such inspection
the inspecting party will designate certain of the inspected documents to be copied and
furnished to it, such files need not be marked with either confidentiality designation in
advance, but shall all be treated as HIGHLY CONFIDENTIAL materials. Only those
persons identified in paragraph 6 subsections (a) and (c) below as permitted to view
HIGHLY CONFIDENTIAL materials may be present at any such inspection. When the
producing party copies the documents to furnish to the inspecting party, the producing
party shall mark Protected Material with the appropriate confidentiality designation to the
extent warranted under paragraph 1.
3.

If any Confidential Information or Highly Confidential Information is

produced by a non-party to this litigation pursuant to this Protective Order, such a nonparty shall be considered a “designating party” within the meaning of that term as it is
used in the context of this Order. The parties recognize that during the course of this
litigation, Confidential Information or Highly Confidential Information that originated
with a non-party and for which there exists an obligation of confidentiality may be
produced. Such information that the designating party believes originated with a nonparty, but is subject to a confidentiality obligation may be designated as Protected

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Information and shall be subject to the restrictions on disclosure specified in Paragraphs
5-8.
4.

In the event a party or person producing information, through

inadvertence, produces or provides information without correctly designating it Protected
Information as provided in this Protective Order, the producing party may give written
notice to the receiving party or parties that the document, thing or other discovery
information, response or testimony is Protected Information and shall be treated as
Protected Information in accordance with the provisions of this Protective Order. The
receiving party or parties must treat such documents, things, information, responses and
testimony as Protected Information from the date such notice is received in accordance
with the provisions of this Protective Order. Upon receipt of such notice, and upon
receipt of properly marked documents, things, information, responses or testimony, the
receiving party shall return or destroy said unmarked or incorrectly marked documents,
things, information, responses and testimony and not retain copies thereof. Upon notice
to the receiving party of such failure to designate, the receiving party shall reasonably
cooperate to correct any disclosure to maintain the confidentiality of the inadvertently
disclosed information, without prejudice.
Disclosure of the Protected Information
5.

Except as provided elsewhere in this Protective Order, information

designated as Protected Information may be disclosed only to the individuals below.
6.

Highly Confidential Information shall only be disclosed to:

(a)

Outside legal counsel of record for Plaintiff or Defendant, including

outside counsel admitted pro hac vice, counsel from the same law firm as outside counsel of

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record, outside counsel retained to assist legal counsel of record for Plaintiff or Defendant, and
necessary paralegals, secretaries, and clerical personnel assisting all such counsel.
(b)

Four (4) in-house legal counsel who are employed by Plaintiff or

Defendant, whose advice and consultation are being or will be used by Plaintiff or Defendant for
purposes of this litigation, and necessary paralegals, secretaries, and clerical personnel assisting
such counsel, as long as these personnel comply with the procedure of Paragraph 15 herein.
(c)

Outside consultants or experts and their staff; whose advice and

consultation are being or will be used by Plaintiff or Defendant for purposes of this litigation,
who are not current officers, directors, or employees of Plaintiff or Defendant, as long as these
personnel comply with the procedure of Paragraph 15 herein. Nothing herein shall prevent Fed.
R. Civ. P. 26(a)(1) fact witnesses from serving in the role of outside consultant or expert. If any
receiving party desires to disclose Protected Information under this provision, it must provide
written notice to the counsel of record for the designating party and identify each such expert or
consultant and provide a fully executed copy of Exhibit 1 completed by the proposed expert or
consultant and a curriculum vitae or similar information regarding the expert’s or consultant’s
employment and affiliations. If the designating party does not within ten (10) days of receipt of
such notice object in writing to the counsel of record for the receiving party setting forth the
grounds for the objection and stating whether it objects to the disclosure of Highly Confidential
Information, Confidential Information, or both, the Protected Information may then be disclosed
to the expert or consultant. If timely objection is made and the parties cannot resolve the issue,
the receiving party may thereupon seek an appropriate order from the Court allowing disclosure
of the Protected Information to the proposed expert or consultant, and the designating party shall
have the burden of proof with respect to the propriety of its objection and prevention of the

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proposed expert or consultant from reviewing the Protected Information. The disclosure of the
identity of a consulting expert will not be a waiver of any privilege that applies to
communications with that expert or the expert’s work product. Furthermore, the parties agree
that by stipulating to the entry of this Protective Order, the parties do not intend to modify in any
way the discovery rules applicable to consulting experts.
(d)

Each person or service contracting firm retained by Plaintiff or Defendant

for the purpose of photocopying, microfiching, translating, litigation database management
and/or operation, or other clerical functions as long as these personnel comply with the
procedure of Paragraph 15 herein.
(e)

Each person or service contracting firm retained by Plaintiff or Defendant

for the purpose of producing graphic or visual aids or exhibits, as long as these personnel comply
with the procedure of Paragraph 15 herein; and
(f)

The Court, Court personnel, and Official Court Reporters to the extent that

Protected Information is disclosed at a deposition or court session which such reporter is
transcribing.
7.

Confidential Information shall be disclosed only to the following

individuals:
(a)

Those persons qualified to receive Protected Information under Paragraph

(b)

In-house legal counsel who are employed by Plaintiff or Defendant, whose

6 above;

advice and consultation are being or will be used by Plaintiff or Defendant for purposes of this
litigation, and necessary paralegals, secretaries, and clerical personnel assisting such counsel, as
long as these personnel comply with the procedure of Paragraph 15 herein;

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(c)

Fed. R. Civ. P. 26(a)(1) fact witnesses or inside consultants, whose advice

and consultation are being or will be used by Plaintiff or Defendant for purposes of this
litigation, as long as these personnel comply with the procedure of Paragraph 15 herein. If any
receiving party desires to disclose Protected Information under this provision to an individual, it
must provide written notice to the counsel of record for the designating party that includes the
identity of each such individual, a fully executed copy of Exhibit 1 completed by the individual,
and a description of why the individual should have access to the Protected Information. If the
designating party does not within ten (10) days of receipt of such notice object in writing to the
counsel of record for the receiving party setting forth the specific grounds for the objection to the
disclosed individual, the Protected Information may then be disclosed to that individual. If
timely objection is made and the parties cannot resolve the issue, the receiving party may
thereupon seek an appropriate order from the Court allowing disclosure of the Protected
Information to the proposed witness or consultant, and the designating party shall have the
burden of proof with respect to the propriety of its objection and prevention of the proposed
witness or consultant from reviewing the Protected Information.
8.

The foregoing lists in Paragraphs 6-7 may be expanded by mutual

agreement in writing by counsel for Plaintiff and Defendant.
Additional Obligations and Limitations
9.

All information designated as Protected Information pursuant to this Order

and disclosed in this litigation shall be used by a recipient thereof solely for the purposes
of this litigation and not for any business or competitive purposes including, but not by
way of limitation, any use of such information for research, development, manufacture,
sales or marketing of any product by or for the receiving party, or for, or in connection

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with, the preparation or prosecution of any patent application by or on behalf of the
receiving party, or use in any other legal proceeding, except as permitted by order of the
Court, or as agreed by the parties. It shall be the duty of each party and each individual
having notice of this Protective Order to comply with this Order from the time of such
notice.
10.

All deposition testimony shall be treated as containing Highly

Confidential Information and subject to this Protective Order until a time twenty (20)
calendar days after the transcript of such testimony is received. In the event that a party
wishes testimony or information disclosed at a deposition to be treated as Protected
Information thereafter, a party shall designate such testimony or information as Protected
Information by notifying the other party in writing, within twenty (20) calendar days of
receipt of the transcript of the deposition, of the specific pages and lines of the transcript
which contain Confidential or Highly Confidential Information. Documents and things
already designated as Confidential or Highly Confidential Information which are used as
exhibits shall remain as such. If during a Court proceeding, Confidential or Highly
Confidential Information is likely to be revealed, any party may request that the
proceeding be held in camera. If such request is granted by the Court, the transcript of
such proceeding shall be treated as a deposition transcript for the purposes of the Order.
11.

This Protective Order is intended to provide a mechanism for handling the

disclosure or production of Confidential or Highly Confidential Information to which
there is no objection other than confidentiality. Neither the agreement of the parties with
respect to Protected Information, nor the designation of any information, document, or
the like as Protected Information, nor the failure to make such designation shall constitute

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evidence with respect to any issue on the merits in this action. Each party reserves the
right to object to any disclosure of information or production of any documents it deems
to contain Confidential or Highly Confidential Information on any other ground it may
deem appropriate, and any party may move for relief from, or general or particular
modification of, the mechanism herein set forth or the application of this Order in any
particular circumstance.
12.

This Protective Order may be amended with respect to (a) specific

documents or items of Protected Information or (b) persons to whom Protected
Information may be disclosed by Court order or by written agreement of the parties
hereto. This Protective Order shall remain in force and effect indefinitely until modified,
superseded or terminated by Order of this Court.
13.

Within sixty (60) days after the final termination of this action (including

all appeals), all documents, objects, and other materials produced as or designated as
Protected Information, including extracts or summaries thereof, and all reproductions
thereof, shall be returned to the designating party or shall be destroyed, at the option of
counsel in possession of such copies. If the materials are destroyed, counsel responsible
for the destruction shall within seven (7) days of such destruction certify to counsel for
the designating party that destruction has taken place. However, outside counsel of
record for each party may retain (a) one copy or sample of all material designated
Protected Information for reference in the event of disputes over the use or disclosure of
such material, (b) documents, things, copies and samples to the extent they include or
reflect receiving attorney’s work product, and (c) one copy of pleadings or other papers
filed with the Court or served in the course of the litigation, the depositions, the

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deposition exhibits and the trial record, and (d) one copy of correspondence which may
or may not refer to or include Protected Information.
14.

No party or person shall disclose or cause to be disclosed to anyone not

specified in Paragraphs 5-8 or Paragraphs 18-19 as being entitled to receive it, any
information designated as Protected Information under this Protective Order without prior
written consent of the designating party or an Order of this Court. If the receiving party
learns that Protected Information produced to it is disclosed to any person other than in
the manner authorized by this Order, the receiving party learning of the disclosure must
immediately inform the designating party of all pertinent facts relating to such disclosure
and shall make every effort to prevent disclosure by each unauthorized person who
received such information.
15.

As specified in Paragraphs 5-8, all required persons must first sign a

Declaration of Compliance with the Protective Order (in the form attached as Exhibit 1
hereto) before gaining access to Protected Information. For a firm or business, the
statement shall be signed by a person authorized to bind the business entity. A file of all
such original written Declarations shall be maintained by counsel for the party obtaining
them.
16.

Nothing herein shall prevent any party or non-party from seeking

additional relief from the Court not specified in this Order, or from applying to the Court
for further or additional Protective Orders.
17.

Except to the extent specified in Paragraph 19, nothing contained in this

Protective Order shall be construed to restrain a party or non-party from disclosing its
own Protected Information as it deems appropriate. Nothing contained in this Protective

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Order shall be construed to require production of any Protected Information deemed by
counsel for the party or non-party possessing such material to be privileged or otherwise
immune from discovery. This shall not preclude any party from moving the Court for an
Order compelling production or disclosure of such material.
18.

Nothing contained in this Protective Order shall be construed to limit any

party’s rights (a) to use, in taking depositions of another party, its employees, or its
experts, or in briefs or at trial or in any proceeding in this litigation, any Protected
Information of the other party, or (b) to disclose Protected Information to any witness at a
deposition or at trial in this litigation who either authored (in whole or in part), received,
or lawfully has or had access to such information. In addition, a witness may be shown
any document that contains or reveals Protected Information if the witness is a present
officer, director, or employee of the designating party. However, any Confidential or
Highly Confidential Information so used shall not lose its confidential status through such
use, and its confidentiality shall be protected in conformance with this Order.
19.

If at depositions, trial, or any proceeding in this litigation, a designating

party intends to show or use any document that contains or reveals its Protected
Information to a witness who does not have access to the document under this Protective
Order, the designating party must give notice to the receiving party twenty (20) days
prior to the deposition, trial, or proceeding, and shall allow the receiving party to disclose
the Protected Information to the witness, so long as the witness complies with the
procedure of Paragraph 15 herein.
20.

If counsel believe that any question or questions that will be put to a

witness at a deposition or at trial in this action will disclose material designated as

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Protected Information, or that answers to any question or questions will require such
disclosure, or if material designated Protected Information will be used as an exhibit at
such a deposition, counsel shall advise opposing counsel of same, and the deposition (or
confidential portions thereof), shall be conducted only in the presence of persons entitled
under the terms of this Protective Order to access to Protected Information.
21.

Nothing herein shall prevent a receiving party from contending (for the

purposes of securing an order so providing from the Court) that any or all Protected
Information is not confidential or otherwise not entitled to protection. Any receiving
party may at any time request that the designating party cancel or change the Protected
Information designation with respect to any document, object or information. Such
request shall be written, shall be served on counsel for the designating party, and shall
particularly identify the designated Protected Information that the receiving party
contends is not Confidential or Highly Confidential and the reasons supporting its
contention. If the designating party does not agree to remove or change the Protected
Information designation, then the receiving party shall file a motion to be relieved from
the restrictions of this Order with respect to the document or information in question, and
the designating party shall have the burden of proving that its designation was
appropriate. Production of documents and things for purpose of inspection and copying
shall not constitute a waiver of confidentiality, privilege or immunity from discovery as
to such documents or any other information.
22.

The restrictions and obligations set forth herein relating to material

designated as Protected Information shall not apply to any information which: (a) the
parties (and, if another non-party produced Protected Information, such non-party) agree,

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or the Court rules, is already public knowledge; (b) the parties (and any respective
producing non-party) agree, or the Court rules, has become public knowledge other than
as a result of disclosure by a receiving party, its employees or agents in violation of this
Protective Order; (c) has come or shall come into a receiving party’s legitimate
possession independently of the producing party; or (d) has been independently
developed by or for the party without use of, or reference to, the other party’s Protected
Information.
23.

In accordance with United States District Court for the Southern District

of Ohio Local Civil Rules 79.3, any documents which contain Protected Information, if
filed with this Court, shall be filed under seal and shall be made available only to the
Court and to persons authorized under the terms of this Order. Pursuant to Procter &
Gamble Co. v. Bankers Trust Co., 78 F.3d 219, 227 (6th Cir. 1996), this Court will
review each filing made under seal to determine whether there is good cause for shielding
the information from public view. If the Court finds that good cause is lacking, it shall
notify the parties and hold a hearing, if necessary, prior to unsealing the document.
24.

All documents and things produced by a party for inspection by the other

shall be retained by the party producing the same and, during the pendency of this
litigation, shall be made available for reinspection for good cause pursuant to the terms of
this Order on reasonable notice and at reasonable times upon request.
25.

In the event any party having possession, custody or control of any

Protected Information disclosed pursuant to this Order receives a subpoena or other
process or order to produce such information in another, unrelated legal proceeding, from
a non-party to this litigation, such party shall notify the outside counsel of record for the

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designating party within ten (10) days of receipt of the subpoena, furnish such counsel
with a copy of said subpoena or other process or order, and cooperate regarding all
reasonable procedures sought to be pursued by the designating party whose interest may
be affected, to maintain the confidentiality of such Protected Information. The
designating party shall have the burden against defending against such subpoena, process
or order. The party who received the subpoena, process or order shall be entitled to
comply with it except to the extent the designating party asserting the Protected
Information designation is successful in obtaining an order modifying or quashing the
subpoena, process or order.
26.

The inadvertent or mistaken production or disclosure of documents or

other information subject to the attorney-client privilege, the work product doctrine, or
other privilege shall not be deemed a waiver of a claim of privilege, either as to the
specific information disclosed or as to any other related information. If a producing party
inadvertently produces or otherwise discloses to a receiving party information that is
subject to such privilege or immunity, the producing party shall promptly upon discovery
of such disclosure so advise the receiving party in writing and request that the
inadvertently disclosed information be returned. The receiving party shall return all
copies of the inadvertently produced material within five business days of receipt of the
request. Any notes or summaries referring or relating to any inadvertently produced
privileged material shall be destroyed. Return of the information or material by the
receiving party shall not constitute an admission or concession, or permit any inference,
that the returned information or material is, in fact, properly subject to a claim of
attorney-client privilege or work product immunity nor shall it foreclose any party from

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moving the court for an order that such information or material has been improperly
designated or should be producible for reasons other than a waiver caused by the
inadvertent production.
27.

Nothing in this Order shall bar or otherwise restrict any attorney herein

from rendering advice to his client with respect to this litigation and, in the course
thereof, relying upon his examination of, but without disclosing, Protected Information
(except to the extent permitted by this Order).
28.

Nothing herein shall be construed to affect in any way the admissibility of

any document, testimony or other evidence at trial.
29.

This Order shall continue in effect after termination of this action and

continue to be binding upon all persons to whom Protected Information is disclosed
hereunder.
30.

This Court shall retain jurisdiction regarding all future disputes relating to

this Order.

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31.
Counsel for Plaintiff

Counsel for Defendant

By: /s/ David E. Schmit
David E. Schmit
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
Tel.: [phone]
Fax.: [phone]

By: /s/ Robert A. Pitcairn, Jr.
Robert A. Pitcairn, Jr.
James F. McCarthy, III
KATZ, TELLER, BRANT & HILD
255 East Fifth Street, Suite 2400
Cincinnati, OH 45202
Tel.: [phone]
Fax.: [phone]

William F. Cavanaugh Jr.
Chad J. Peterman
Charles D. Hoffman
PATTERSON BELKNAP
WEBB & TYLER LLP
1133 Avenue of the Americas
New York, NY 10036
Tel.: [phone]
Fax: [phone]

Drew Wintringham
Frank Ryan
Mark Rueh
DLA PIPER
1251 Avenue of the Americas
New York, NY 10020
Tel.: [phone]
Fax.: [phone]
Erica J. Pascal
DLA PIPER
401 B Street, Suite 1700
San Diego, CA 92101
Tel.: [phone]
Fax.: [phone]

IT IS HEREBY ORDERED:
__s/ Timothy S. Black________
Timothy S. Black
United States District Judge

Dated: June 21, 2012

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EXHIBIT 1
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

ETHICON ENDO-SURGERY, INC.
Plaintiff,
v.
COVIDIEN, INC.
Defendant.

)
)
)
)
)
)
)
)
)
)
)

Civil Action No. 1:11-cv-871

Judge Timothy S. Black

DECLARATION OF COMPLIANCE
I, the undersigned, hereby acknowledge that I have read the Protective Order
entered in this action, understand the terms thereof, agree to be bound by such terms, and agree
to be subject to the jurisdiction of said Court in all matters relating to said Protective Order. I
acknowledge that I will treat all information designated as “Confidential” and/or “Highly
Confidential” strictly in accordance with the terms and conditions of this Protective Order, and
that I understand that any unauthorized use of such material that I receive may constitute
contempt of court.
DATED: ____________________________

________________________________
Signature

Address:

________________________________
Print Name

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