Stuart v. Rust-Oleum Corporation et al

Filing 40

PROTECTIVE ORDER. Signed by Magistrate Judge Terence P. Kemp on 2/7/2017. (agm)

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
Alan Stuart, Trustee for The Cecil G. Stuart and
Donna M. Stuart Revocable Living Trust
Agreement, 3733 St. Rt. 151, Mingo Junction,
Ohio 43938; and CDS Development LLC, a
Delaware Corporation,
Plaintiffs,

Case No. 2:16-cv-00622

v.
RPM International, Inc., a Delaware corporation,
Rust-Oleum Corp., an Illinois corporation,
Wipe New LLC, a Virginia company, and
The Avento Corp. a Virginia Corporation,

Chief Judge Sargus
Magistrate Judge Kemp

Defendants.

[PROPOSED] PROTECTIVE ORDER
The Court recognizes that disclosure and discovery activity are likely to arise that will
require the disclosure of trade secrets, confidential research, development, manufacturing,
financial, process, marketing, and business information, or other commercial information within
the meaning of Federal Rule of Civil Procedure 26(c). Good cause exists to protect this
information from public disclosure. In the absence of a suitable protective order safeguarding the
confidentiality of such information, the parties would be hampered in their ability to produce
such information.
Accordingly, the Court ORDERS that the parties shall adhere to the following:
1.

DESIGNATION OF PROTECTED MATERIAL

1.1

This Order shall govern all documents and other products of discovery obtained

by the parties from one another, and from third parties, all information copied or derived
therefrom, as well as all copies, excerpts, summaries or compilations thereof, including

documents produced pursuant to requests authorized by the Federal Rules of Civil Procedure,
answers to interrogatories, deposition transcripts, responses to requests for admission, affidavits,
declarations, expert reports, and other such material and information as may be produced during
the course of this litigation.
1.2

In connection with discovery proceedings in this action, any party or third party

may designate any non-public document, material, or information as “CONFIDENTIAL” or
“HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY” (collectively referred to as
“Protected Material”).
(a)

A party may designate as “CONFIDENTIAL” any information,

document, or thing that the party reasonably and in good faith believes to contain
confidential information within the meaning of Fed. R. Civ. P. 26(c)(7) used by it in, or
pertaining to, its business and that is not generally known, and which that party would not
normally reveal to third parties or, if disclosed, would require such third parties to
maintain in confidence.
(b)

A party may designate as “HIGHLY CONFIDENTIAL – ATTORNEY

EYES ONLY” such materials as the party reasonably and in good faith believes to contain
particularly sensitive technical information relating to research for and production of
current products; technical, business, and research information regarding future products;
non-public and highly sensitive financial information; marketing and sales information,
such as marketing plans and forecasts, customer lists, pricing data, cost data, customer
orders, and customer quotations; any pending or abandoned patent applications, foreign or
domestic; and such other documents, information, or materials that relate to other
proprietary information that the designating party reasonably believes is of such nature

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and character that disclosure of such information would be harmful to the designating
party.
1.3

The following information shall not be designated or protected under this

Protective Order:
(a)

Information that is in the public domain at the time of disclosure,

including patent file histories, publicly available prior art publications, catalogs and other
advertising materials, press releases, and publicly-filed financial statements;
(b)

Information that at any time is made public through no act of a non-

designating party;
(c)

Information that the designating party has not undertaken with others to

maintain in confidence and that is in the possession of or becomes available to the
receiving party other than through discovery in this action, but only if the receiving party
can show by written documentation that the information independently came into its
rightful possession; or
(d)

Information that is independently developed by the receiving party, as

reflected by written documentation demonstrated to be in existence prior to production by
the party claiming confidentiality.
1.4

Any documents or things produced pursuant to a discovery request or other

written materials exchanged by the parties (including discovery responses, letters, and briefs)
that a party desires to designate as Protected Material shall be so designated by marking each
page of the document, paper or thing CONFIDENTIAL or HIGHLY CONFIDENTIAL –
ATTORNEY EYES ONLY, as appropriate, and indicating the identity of the producing party
(e.g., through the use of an identifying prefix to the document identification (Bates) number).

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1.5

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 – ATTORNEY EYES ONLY materials. Only those
persons identified in paragraph 2.2 below as permitted to view HIGHLY CONFIDENTIAL –
ATTORNEY EYES ONLY 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 1.2.
1.6

Whenever a deposition involves a disclosure of Protected Material, the following

procedures shall apply:
(a)

Any party may designate any portion or all of a deposition as

CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY by
notifying the other parties on the record during the deposition. The Court Reporter shall be
asked to make the appropriate confidentiality designation on each page of the transcript that
contains CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY
information. At that time, all persons not qualified to receive that category of information
shall leave the room prior to continuation of the deposition and until the conclusion of such
designated testimony; and
(b)

Any party may also designate any portion or all of a deposition as

CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY by

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notifying the other parties separately in writing within thirty days of receipt of the
transcript. In such event, the parties shall confer as to the most convenient way to segregate
the designated portions of the transcript. All information disclosed at a deposition and all
information contained in deposition transcripts shall be treated as HIGHLY
CONFIDENTIAL – ATTORNEY EYES ONLY for a period of thirty days after the receipt
of the transcript to permit adequate time for review of the transcript and notice to other
counsel regarding any designation as Protected Material by a designating party.
2.

ACCESS TO AND USE OF PROTECTED MATERIAL

2.1

Protected Material, and all summaries, compilations, and derivations thereof,

whether oral or written, shall be maintained in confidence, shall be used solely in the preparation,
prosecution, or trial of this action and not for any other purpose, and shall be disclosed only as
provided in the following paragraphs.
2.2

Information which has been designated as HIGHLY CONFIDENTIAL –

ATTORNEY EYES ONLY may be disclosed only to:
(a)

The outside attorneys of record and their employees who are engaged in

assisting in this action; provided that such does not include any persons participating in the
prosecution of any present or future patent application (including the reexamination or
reissue of any present or future patent) that is a counterpart to or related to the patents-insuit ("participating" in such prosecution includes preparing or reviewing patent
applications, reviewing office actions, preparing or reviewing responses to office actions,
and engaging in any discussion or other communication regarding the scope or validity of
any claims in such patent applications or in the patents that are the subject of such
reexamination or reissue); provided that this exclusion does not apply to persons whose

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involvement with the prosecution of such patents or patent applications is limited to
administrative oversight for billing or project assignment purposes;
(b)

The following in-house counsel of a receiving party, (1) who has no

involvement in competitive decision-making or in patent prosecution involving restoration
or renovation of vinyl siding with solvents, (2) to whom disclosure is reasonably necessary
for this litigation, and (3) who has signed the “Agreement to Be Bound by Protective
Order” in Exhibit A, may have access: Mike Murphy;
(c)

Independent consultants or experts retained by the party or its attorneys in

connection with this action, including technical experts, damage and industry experts,
patent experts, and jury or trial consultants, together with their employees engaged in
assisting in this action (including mock jurors), but only subject to the provisions of
paragraph 2.5 below; provided that such does not include any persons participating in the
prosecution of any present or future patent application (including the reexamination or
reissue of any present or future patent) that is a counterpart to or related to the patents-insuit ("participating" in such prosecution includes preparing or reviewing patent
applications, reviewing office actions, preparing or reviewing responses to office actions,
and engaging in any discussion or other communication regarding the scope or validity of
any claims in such patent applications or in the patents that are the subject of such
reexamination or reissue); provided that this exclusion does not apply to persons whose
involvement with the prosecution of such patents or patent applications is limited to
administrative oversight for billing or project assignment purposes;
(d)

The Court and its personnel;

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(e)

Court reporters and their personnel engaged in proceedings incident to

preparation for trial or engaged in trial;
(f)

Professional vendors and their employees, including copy services, trial

graphics services, and translation services, engaged by counsel; and
(g)

Any person who is indicated on the face of a document to have been an

author, addressee, or copy recipient of the document, or the original source of the
information.
(h)
2.3

Mr. Alan Stuart in oral form, relating to consolidated financial summaries.

Information that has been designated as CONFIDENTIAL may be disclosed only

to:
(a)

The persons identified in paragraph 2.2; and

(b)

Any party or employee of a party to whom disclosure is reasonably

necessary for this litigant and litigation who has signed the “Agreement to Be Bound by
Protective Order” in Exhibit A.
2.4

Protected Material shall be disclosed to consultants and experts only upon the

following terms:
(a)

Prior to any disclosure, the consultant or expert shall be identified in

writing to the other parties’ counsel by name, address, and corporate, business or other
professional affiliation or employment, together with a copy of the expert’s curriculum
vitae and a list of the expert’s litigation or consulting engagements for the past three years;
(b)

Unless another party notifies the proposing party of any objection and that

objection is received within five business days after notification (by fax, by email, or by

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overnight mail), the consultant or expert shall thereafter be allowed to have access to
Protected Material pursuant to the terms and conditions of this Protective Order;
(c)

In the event of a timely objection, which shall be made in good faith and

on reasonable grounds, the proposing party shall refrain from disclosure of Protected
Material to the consultant or expert until the objection has been resolved between the
parties or ruled upon by the Court;
(d)

The parties shall endeavor in good faith to resolve the dispute without

calling upon the intervention of the Court. The burden is on the objecting party to seek the
intervention of the Court by appropriate motion to preclude the proposing party from
disclosing Protected Material to the consultant or expert. If no such motion is filed within
ten business days of receipt of the objection, the proposing party may disclose Protected
Material to the consultant or expert as if no objection had been raised; and
(e)

No party shall use its right to object to a proposed consultant or expert to

interfere with the ability of another party to prepare for trial through the use of consultants
and experts.
2.5

Prior to receiving any Protected Material, any persons described in sections (b),

(c), (e), or (f) of paragraph 2.2 shall be furnished with a copy of this Protective Order and shall
execute a copy of the “Agreement to be Bound by Protective Order” attached as Exhibit A. A
copy of the signed Agreement shall be maintained by counsel for the party providing such
access.
2.6

Nothing in this Protective Order shall prevent any counsel of record from utilizing

Protected Material in the examination of any person who is reasonably alleged to be the author or

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source of the Protected Material or who is reasonably believed to have knowledge relating
thereto. In addition,
(a)

Parties and present employees of the parties, or employees of third parties,

may be examined as a witness at depositions and trial and may testify concerning all
Protected Material produced or designated by that party, or by the employee's employer if a
third party;
(b)

Former employees of the parties, or former employees of third parties,

may be examined and may testify concerning all Protected Material produced or designated
by the party or third party that formerly employed such person and which pertains to the
period or periods of his/her employment and prior thereto; and
(c)

Former experts of the parties may be examined and may testify concerning

all Protected Material produced or designated by the respective party that pertains to the
subject matter of his/her consultation.
2.7

Nothing in this Protective Order shall preclude any party from introducing

Protected Material into evidence at any evidentiary hearing or at trial. However, if anyone
intends to introduce or refer to Protected Material at any hearing or trial, the party wishing to
make the disclosure shall first notify the producing party and provide that party with an
opportunity to object and/or to ask the Court to take appropriate precautionary procedures (e.g.,
clearing the Courtroom, sealing the record, etc.).
2.8

Nothing in this Protective Order shall bar or otherwise restrict any attorney from

rendering advice to his/her clients with respect to this litigation and referring to or relying
generally upon his/her examination of Protected Material, provided that in rendering such advice

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and in otherwise communicating with his/her clients, the attorney shall not disclose the content
of such information.
2.9

All persons in possession of Protected Material shall exercise reasonable and

appropriate care with regard to the storage, custody, and use of such information in order to
ensure that the provisions of this Protective Order are observed and the confidential nature of the
information is maintained.
3.

CHALLENGES TO CONFIDENTIALITY DESIGNATIONS

3.1

Any party believing that particular information has been improperly marked, i.e.,

that it is not in fact CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES
ONLY, may challenge such designation at any time by raising the issue, in writing to the
designating party, and specifically identifying, by document identification (Bates) number, by
deposition page and line, or by other appropriate specific identifier, the information whose
confidentiality status is challenged. Within ten business days of receipt of such writing, the
designating party shall either remove or reduce the designation, or respond that it has reviewed
the matter and continues to maintain the designation in good faith.
3.2

The parties shall endeavor in good faith to resolve any such dispute without

calling upon the intervention of the Court. If the designating party maintains its designation and
the parties are unable to reach agreement, the challenging party may bring the issue to the Court.
The party asserting confidentiality shall have the burden of establishing the appropriateness of
the designation, except that a party claiming that information designated by the other as
confidential is in the public domain shall have the burden of proving such public knowledge.
3.3

Challenged information shall be treated as designated until the resolution of the

dispute by the parties or ruling by the Court.

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4.

FILING OF PROTECTED MATERIAL

4.1

This Protective Order does not authorize filing protected materials under seal.

According to the authority of Procter & Gamble Co. v. Bankers Trust Co., 78 F.3d 219 (6th Cir.
1996), no document may be filed with the Court under seal without prior permission as to each
such filing, upon motion and for good cause shown, including the legal basis for filing under
seal. Unless the Court orders otherwise, all sealed documents shall be filed according to S. D.
Ohio Civ. R. 79.3.
5.

TERMINATION OF LITIGATION

5.1

The obligations of this Protective Order shall survive the termination of the action

and continue to bind the parties. Within sixty days after termination of this action by judgment,
settlement, or otherwise from which no appeal can be brought, each party shall destroy all
documents containing or disclosing Protected Material of any other party. Each party’s outside
litigation counsel shall have the right to retain one copy of the pleadings; of motions,
memoranda, documents, and papers filed with the Court; of deposition transcripts and exhibits;
and of any documents constituting work product.
6.

THIRD PARTY DISCOVERY

6.1

In the event that any third party shall be called upon, by subpoena or otherwise, to

provide or produce documents or information considered CONFIDENTIAL or HIGHLY
CONFIDENTIAL – ATTORNEY EYES ONLY by such third party, such third party may elect
to have its information treated in accordance with the terms of this Protective Order by so
notifying counsel for all parties in writing. Upon service of such notice, such third party may
designate documents and information as CONFIDENTIAL or HIGHLY CONFIDENTIAL –
ATTORNEY EYES ONLY in the manner set forth in this Protective Order, and such third

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party’s designated information shall be protected in the same manner as that of the parties to this
action.
7.

INADVERTENT DISCLOSURE

7.1

If a party inadvertently discloses any document or thing containing information

that it deems CONFIDENTIAL or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY
without designating it pursuant to this Protective Order, the disclosing party shall promptly upon
discovery of such inadvertent disclosure inform the receiving party in writing, forwarding a
replacement copy of the inadvertently disclosed material properly marked with the appropriate
confidentiality designation. The receiving party shall thereafter treat the information as if it had
been properly marked from the outset and shall make a reasonable effort to retrieve and destroy
the unmarked version of the inadvertently disclosed material. Disclosure by the receiving party
to unauthorized persons before being notified of the inadvertent disclosure shall not constitute a
violation of this Protective Order. Nothing in this Protective Order shall preclude the receiving
party from challenging the confidentiality designation of the late-marked material pursuant to the
provisions of paragraph 3.
7.2

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

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days of receipt of the request. Any notes or summaries referring or relating to any inadvertently
produced privileged material shall be destroyed. Nothing in this Protective Order shall preclude
the receiving party returning the inadvertently produced material from seeking an order
compelling the production of information previously produced inadvertently.
8.

MISCELLANEOUS PROVISIONS

8.1

If Protected Material in the possession of any receiving party is subpoenaed by

any court, by any administrative or legislative body, or by any other person purporting to have
authority to subpoena such information, or is the subject of any discovery request under Rules
30-36 of the Federal Rules of Civil Procedure or any comparable rule of court or of any
adjudicative body (such subpoena or discovery request collectively referred to as a "Third Party
Request"), the party to whom the Third Party Request is directed will not produce such
information without first giving prompt written notice (including a copy of the Third Party
Request) to the attorneys of record for the producing party, no more than three business days
after receiving the Third Party Request. The party receiving the Third Party Request must also
promptly inform in writing the party who caused the Third Party Request to issue in the other
litigation that some or all the material covered by the Third Party Request is subject to this
Protective Order. The party receiving the Third Party Request must deliver a copy of this
Protective Order promptly to the party in the other action that caused the Third Party Request to
issue.
8.2

The producing party shall bear the burden and expense of seeking protection in

court of its own Protected Material, and nothing in this Protective Order should be construed as
authorizing or encouraging a party receiving a Third Party Request in this action to disobey a

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lawful directive from another court. Disclosure of information in response to a properly issued
Third Party Request shall not constitute a violation of this Protective Order.
8.3

This Protective Order may be modified only by further Order of the Court,

whether sua sponte or by agreement of the parties or their counsel and approval by the Court, and
is without prejudice to the rights of any party to move for relief from any of its provisions, or to
seek or agree to different or additional protection for any particular material or information.
8.4

Treatment by counsel or the parties of information designated CONFIDENTIAL

or HIGHLY CONFIDENTIAL – ATTORNEY EYES ONLY as designated shall not be
construed as an admission by any party that the designated information contains trade secrets or
other proprietary or confidential information. Conversely, failure to so designate shall not
constitute a waiver of any party’s claims, either within or outside this action, that any such
documents or information do contain trade secrets or other proprietary or confidential
information.
8.5

No party shall be obligated to challenge the propriety of any designation, and

failure to challenge a claim of confidentiality at the time of receipt shall not constitute a waiver
of the right to challenge a confidentiality designation at any later time.
IT IS SO ORDERED.

TERENCE P. KEMP
UNITED STATES MAGISTRATE JUDGE

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EXHIBIT A
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
Alan Stuart, Trustee for The Cecil G. Stuart and
Donna M. Stuart Revocable Living Trust
Agreement, 3733 St. Rt. 151, Mingo Junction,
Ohio 43938; and CDS Development LLC, a
Delaware Corporation,
Plaintiffs,

Case No. 2:16-cv-00622

v.
RPM International, Inc., a Delaware corporation,
Rust-Oleum Corp., an Illinois corporation,
Wipe New LLC, a Virginia company, and
The Avento Corp. a Virginia Corporation,

Chief Judge Sargus
Magistrate Judge Kemp

Defendants.

AGREEMENT TO BE BOUND BY PROTECTIVE ORDER
I, __________________________ , hereby acknowledge that I received a copy of the
Protective Order in this action. I read and understood the Protective Order and agree to be bound
by its provisions. I agree not to copy or use any CONFIDENTIAL or HIGHLY
CONFIDENTIAL – ATTORNEY EYES ONLY information that may be provided to me for any
purpose other than in connection with my retention in connection with this action, and I agree
not to reveal any such information to any person not authorized by the Protective Order.
I further acknowledge and understand that a violation of the Protective Order may
subject me to penalties of the Court, and I hereby submit to the jurisdiction of the United
States District Court for the Southern District of Ohio in connection with any proceedings
concerning enforcement of the Protective Order.
Dated: