Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al

Filing 284

MEMORANDUM OPINION AND ORDER - denying 271 SEALED PATENT MOTION TO AMEND THE STIPULATED PROTECTIVE ORDER IN CIVIL ACTION NO. 2:16-cv-0401 AS TO DEFENDANT FAMY CARE LIMITED ONLY. 283 MOTION for Hearing DEFENDANT FAMY CARE LIMITED'S MOTION FOR IN-PERSON HEARING on Opposed Motion to Amend Stipulated Protective Order. Signed by Judge William C. Bryson on 2/28/2017. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

ALLERGAN, INC.,

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Plaintiff,
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Case No. 2:15-cv-1455-WCB
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v.
LEAD CASE
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TEVA PHARMACEUTICALS USA, et al.,
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Defendants.
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______________________________________________________________________________
ALLERGAN, INC.,
Plaintiff,
v.
FAMY CARE LIMITED,
Defendant.

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Case No. 2:16-cv-0401-WCB

MEMORANDUM OPINION AND ORDER
Before the Court is the Opposed Motion to Amend the Stipulated Protective Order in
Civil Action No. 2:16-cv-0401 as to Defendant Famy Care Limited Only, Dkt. No. 271, filed by
defendant Famy Care Ltd. (“FCL”). FCL requests that the Protective Order governing the
consolidated case be amended in FCL’s individual case to allow two non-attorneys to view
material that the plaintiff Allergan, Inc., designated “Confidential.”

FCL has also filed

Defendant Famy Care Limited’s Motion for In-Person Hearing, Dkt. No. 283, which requests an
in-court hearing on its motion to amend the protective order. Plaintiff Allergan, Inc., also
opposes this motion. Dkt. No. 283, at 4. The Court DENIES both motions.

1

BACKGROUND
On August 24, 2015, Allergan filed Case No. 2:15-cv-1455 against Teva Pharmaceuticals
USA, Inc.; Akorn, Inc.; Mylan Pharmaceuticals, Inc.; and Mylan, Inc. Allergan filed a separate
action against Innopharma, Inc., on September 8, 2015. Allergan, Inc. v. Innopharma, Inc., Case
No. 2:15-cv-1504 (E.D. Tex.). That case was consolidated with the previous action on October
29, 2015. Id., Dkt. No. 20.
On January 4, 2016, the Court entered a protective order agreed upon by the parties that
were then party to the consolidated case. Dkt. No. 86. 1 Under that protective order, the parties
may designate as “Confidential” any material “that a Producing Party believes in good faith can
be disclosed to select employees or agents of a Receiving Party . . . solely for the purposes set
forth herein without substantial risk of harm to the Producing Party.” Id. at 3. In defining
“Confidential” information, the order provides:
Examples of such information include, but are not limited to: trade secrets or
other confidential research, development, commercial, proprietary, non-public,
technical, business, financial, patent prosecution, sensitive, or private information,
including any approved or unapproved New Drug Application (NDA) or
Abbreviated New Drug Application (ANDA) that purports to cover a product
involved in this suit and any amendments thereto, or any correspondence with the
FDA regarding same. The term also includes extremely sensitive confidential
information that a Producing Party believes in good faith: (i) creates a substantial
risk of harm to the Producing Party if disclosed to select employees or agents of a
Receiving Party . . . ; (ii) is necessary to protect the privacy interests of an
individual; or (iii) is subject to an express obligation of confidentiality owed by
the Producing Party to a third party.
Id. Access to Confidential information is restricted to the receiving party’s outside counsel and
“up to three In-House counsel per group of affiliated parties and each counsel’s clerical staff and
paralegals.” Id. at 8.

1

“Dkt. No.” citations refer to Case No. 2:15-cv-1455, unless otherwise noted.

2

Allergan sued FCL on April 12, 2016, and Allergan and FCL jointly moved to
consolidate the case with the previously instituted action, No. 2:15-cv-1455 (lead case). See
Case No. 2:16-cv-401, Dkt. Nos. 1, 29. The joint motion to consolidate did not mention the
protective order entered in the lead case.

Id., Dkt. No. 29.

Neither did the subsequent

consolidation order entered on June 16, 2016. Dkt. No. 140.
The parties, including FCL, engaged in discovery under the existing protective order
through February 10, 2017, with expert discovery continuing through May 16, 2017. See Dkt.
No. 269, at 2. FCL, for example, “was providing accelerated fact discovery” during the summer
of 2016. Dkt. No. 271, at 4 (FCL served initial disclosures as well as noninfringement and
invalidity contentions in July 2016, and produced documents to Allergan on June 6 and June 20,
2016).
It appears that FCL first proposed allowing non-attorneys access to Confidential
information on October 31, 2016. Dkt. No. 271-5; compare Dkt. No. 271-4 (email from FCL’s
counsel to Allergan’s counsel on September 9, 2016, states, without further explanation, that
FCL would “like to discuss a modification to the protective order” at a future date). FCL
requested that Ms. Minaksi Bhatt, an attorney and Vice President of Intellectual Property at
Lupin Pharmaceuticals, Inc., (collectively, together with Lupin Ltd., “LPI”), as well as Ms.
Rachita Naidu and Mr. Manish Mundra, two non-attorneys in LPI’s Intellectual Property
Management Group, be designated as FCL’s three “In-House counsel” representatives. 2 Dkt.
No. 271, at 1-2.

2

FCL represents that it entered into an agreement with LPI granting LPI the authority to
supervise and control the litigation, and therefore proposes LPI personnel as “In-House counsel.”
Dkt. No. 271, at 1 n.3. (FCL is the ANDA-holder; LPI will act as FCL’s United States
distributor. Id.) Allergan has not opposed FCL’s motion to amend the protective order on this
ground.
3

In nearly identical declarations, Ms. Naidu and Mr. Mundra averred that LPI’s
Intellectual Property Management Group, of which they are a part, “supervises FCL’s litigation
counsel in this case,” and that they review FCL’s filings, contentions, and discovery responses,
and will review FCL’s expert reports. Dkt. No. 271-10, at 3; Dkt. No. 217-11, at 3. They also
state that their “responsibilities at Lupin are limited to management of intellectual property and
patent litigation,” explaining that they “track patent litigations, provide updates on those
litigations to management, and . . . communicate with other groups about those litigations,”
while limiting those communications “to information already in the public domain.” Id.
Allergan agreed to treat Ms. Bhatt as “In-House counsel” under the protective order but
objected to treating Ms. Naidu and Mr. Mundra in that manner, because they are not attorneys.
As revealed by FCL’s briefing of its motion to modify the protective order, LPI has another inhouse attorney, Ms. Kathryn Jones, who works with Ms. Bhatt but whom FCL has not proposed
to serve as “In-House counsel” under the protective order. See Dkt. No. 279-3.
DISCUSSION
I. Legal Standard
The parties disagree about the proper legal standard for the Court to apply to this disputed
issue. FCL contends that it never agreed to have the existing protective order govern the
consolidated cases and that Allergan bears the burden of proving that the existing protective
order should apply to FCL. Allergan, meanwhile, argues that the existing protective order
applies to all of the parties in the consolidated cases and that FCL bears the burden of showing
good cause to amend that protective order as it applies to FCL.
Even though FCL’s case was consolidated after the protective order had been entered in
the lead case, that does not mean that FCL’s case is not governed by the protective order. As

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stated in the consolidation order, FCL’s separate case would “remain[] active for venue
determinations and trial,” but the case against FCL was otherwise “consolidated for all pretrial
issues (except venue) with the Lead Case.” Dkt. No. 140, at 1. The “parties [were] instructed to
file any future filings (except relating to venue) in the Lead Case.” Id. In other words, venue
and trial were carved out, but the FCL case was consolidated for all other purposes.
Furthermore, FCL did not object to the protective order for more than four months after
consolidation. Meanwhile, FCL and Allergan were engaged in discovery and were producing a
large volume of documents pursuant to the existing protective order. See, e.g., Dkt. No. 271, at 4
(FCL made two document productions to Allergan in July 2016).

Allergan, in particular,

produced more than 1.5 million pages of documents under the terms of the protective order. Dkt.
No. 278, at 7. For months, FCL accepted Allergan’s productions under the protective order and
gave no reason for the parties to behave otherwise. Its contention that the protective order
should be modified in its case comes late and ignores the prior proceedings in the case.
Thus, after successfully moving to consolidate the cases for all pretrial issues but venue,
FCL accepted discovery on the same terms as the other defendants without objection. The
consolidation order and FCL’s conduct establish that the parties have treated the existing
protective order as applicable to the entire consolidated case, including FCL’s individual case.
FCL’s current motion is therefore properly viewed not as an opposition to the entry of a
protective order under Fed. R. Civ. P. 26(c), but as a request to modify the existing one.
FCL argues that Allergan should bear the burden of showing good cause to maintain the
existing protective order in effect as to FCL even if, consistent with the title of FCL’s motion,
FCL is viewed as moving to amend the current protective order.

According to FCL, the

nonmoving party always has the burden of showing good cause when the moving party

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challenges a blanket protective order—i.e., an order that allows the producing party to determine
the confidentiality designation of its documents. See United States v. Ocwen Loan Serv’g, No.
4:12-CV-543, 2016 WL 278968, at *3, *4 (E.D. Tex. Jan. 22, 2016) (citing In re Enron Corp.
Sec., Derivative, & ERISA Litig., No. MDL-1446, 2009 WL 3247432, at *3 (S.D. Tex. Sept. 29,
2009)).
FCL’s position is based on an incorrect reading of the case law. The nonmoving party
does not always bear the burden of defending a blanket protective order; rather, the nonmoving
party bears the burden of defending its designations if the moving party challenges the good
cause basis for the document designations. See In re Enron, 2009 WL 3247432, at *3 (“Such
blanket orders are inherently subject to challenge and modification, as the party resisting
disclosure generally has not made a particularized showing of good cause with respect to any
individual document.”). 3
Here, FCL is not challenging the good cause basis for Allergan’s confidentiality
designations, or even the good cause basis for a two-tier protective order.

Indeed, FCL

repeatedly argues that its proposed modification permitting access to non-attorneys will preserve
Allergan’s “Confidential” designations and not result in further disclosure or use. See Dkt. No.
271, at 6 (“FCL accepts the existing Order (Dkt. No. 86) except for this dispute over Section
5(a)(ii) (and the related definitions), governing the access of in-house employees to confidential
materials.”). Clearly, FCL is challenging only the good cause for limiting access to these
documents to in-house non-attorney employees. As the movant on that issue, FCL bears the
burden of showing good cause for the modification.

3

In fact, until mid-January 2017, FCL itself designated “every document it produced
‘Confidential.’” Dkt. No. 279, at 1.
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The Court also notes that, to the extent FCL argues that the protective order does not
control, this district’s Local Patent Rule 2-2 would apply. That Rule provides:
If any document or information produced under these Patent Local Rules is
deemed confidential by the producing party and if the Court has not entered a
protective order, until a protective order is issued by the Court, the document shall
be marked “confidential” . . . by the disclosing party and disclosure of the
confidential document or information shall be limited to each party’s outside
attorney(s) of record and the employees of such outside attorney(s).
If a party is not represented by an outside attorney, disclosure of the confidential
document or information shall be limited to one designated “in house” attorney[.]
If FCL were correct that the existing protective order does not apply, then it would now be
operating under the Local Rule, which allows only outside counsel to access “Confidential”
material and is much more restrictive than the existing protective order in the consolidated cases.
In any event, for the reasons set forth below, the Court concludes that FCL has not shown any
adequate reason to modify the access provision of the existing protective order, as it applies to
FCL.
II. FCL Has Not Shown Good Cause to Modify the Protective Order
The Court has “broad discretion in entering and modifying [a protective] order.”
Raytheon v. Indigo Sys. Corp., No. 4:07-cv-109, 2008 WL 4371679, at *2 (E.D. Tex. Sept. 18,
2008). When “deciding whether to modify a stipulated protective order at the behest of a party
that originally agreed to the order . . . , the court considers four factors: (1) the nature of the
protective order, (2) the foreseeability, at the time of the issuance of the order, of the
modification requested, (3) the parties’ reliance on the order, and most significantly (4) whether
good cause exists for modification.” United States v. Ocwen Loan Serv’g, 2016 WL 278968, at
*2 (quoting Raytheon, 2008 WL 4371679, at *2) (internal quotation marks omitted).

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A. Nature of the Protective Order
The “nature” of the protective order refers to “its scope and whether it was court imposed
or stipulated to by the parties.” Ocwen Loan Serv’g, 2016 WL 278968, at *2. Here, the relevant
“scope” of the existing protective order is the provision limiting access to three in-house counsel
(and clerical staff and paralegals).

The undisputed definition in the protective order of

“Confidential information” is “trade secrets or other confidential research, development,
commercial, proprietary, non-public, technical, business, financial, patent prosecution, sensitive,
or private information.” Dkt. No. 86, at 3. The definition also includes “extremely sensitive
confidential information that . . . (i) creates a substantial risk of harm to the Producing Party if
disclosed to select employees or agents of a Receiving Party . . . ; (ii) is necessary to protect the
privacy interests of an individual; or (iii) is subject to an express obligation of confidentiality” to
a third party. Id.
Under this definition, restricting access to attorneys is reasonable. FCL argues that its
proposed non-attorney designees do not present a risk of disclosure and will sign statements
agreeing to this Court’s jurisdiction and to abide by the prospective restrictions imposed by the
protective order on in-house counsel with access to confidential material. See Dkt. No. 271-10,
at 3-4 (citing Dkt. No. 86, at 8); Dkt. No. 271-10, at 3-4 (same). Regardless of those promises,
however, those individuals are not attorneys, and that distinction matters. As the Federal Circuit
stated in U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984), in the context
of access to and handling of confidential material, “retained” and “in-house” counsel are both
“officers of the court, are bound by the same Code of Professional Responsibility, and are
subject to the same sanctions.” See also Round Rock Res., LLC v. Dell Inc., No. 4:11-CV-332,
2012 WL 1848672, at (E.D. Tex. Apr. 11, 2012) (relying on U.S. Steel Corp. “[i]n determining

8

whether a protective order should bar one party’s attorney access to information”) (emphasis
added). FCL’s proposed non-attorney designees are not officers of the court, are not bound by
the same Code of Professional Responsibility, and are not subject to the same sanctions. They
cannot be disbarred or disciplined in the same way, and therefore they do not face similarly
serious consequences for breach of the protective order. And while the proposed non-attorneys
may agree to submit to the Court’s jurisdiction, the Court is aware that it may have limited or no
enforcement power over the designees (who are located in India), and over Allergan’s documents
once they are sent abroad for review.
FCL nevertheless emphasizes that its proposed non-attorneys have been granted access to
documents of some level of confidentiality in other actions by agreed stipulation, e.g., Dkt. No.
271-13, and both non-attorneys declare that they have never been accused of improper
disclosure, Dkt. No. 271-10, at 4; Dkt. No. 271-11, at 4. But Allergan is not solely concerned
with the character and intent of these non-attorneys; it is also concerned with the risk of
inadvertent disclosure. See U.S. Steel, 730 F.2d at 1468 (“To the extent that [inadvertent
disclosure] may be predicted, and cannot adequately be forestalled in the design of a protective
order, it may be a factor in the access decision.”).
It is unclear whether the non-attorneys are personally involved in competitive
decisionmaking, but both state that they provide “updates to management.” Dkt. No. 271-10, at
3; Dkt. No. 271-11, at 3. At a minimum, that characterization of their responsibilities suggests
that the non-attorneys are working closely with those involved in competitive decisionmaking.
For those reasons, and because LPI has in-house attorneys, the Court concludes that FCL has
failed to show the protective order is overly broad to the extent that it restricts access to retained
and in-house attorneys. Compare PACid Group, LLC v. Apple, Inc., No. 6:09-cv-143, 2010 WL

9

10094684, at *4 (E.D. Tex. Feb. 19, 2010) (finding absence of good cause for a protective order
restricting access to confidential materials by plaintiff’s counsel, because a “reason to believe”
that outside counsel was a competitive decisionmaker “cannot be the basis for restricting an
ongoing attorney-client relationship.”) (emphasis added).
In addition, the Court considers FCL’s willingness to date to litigate this case under the
existing protective order, which weighs against modification. See Ocwen Loan Serv’g, 2016
WL 278968, at *3 (collecting cases reasoning similarly and concluding that “the parties agreed
to the protective order; and therefore, that factor weighs against modification.”).
B. Foreseeability of the Modification Requested
Parties that agree to a protective order are responsible for its terms; thus, a “party’s
oversight in not negotiating a provision in a protective order considering a matter which should
have been reasonably foreseeable at the time of the agreement has been held not to constitute
good cause for the relief from the protective order.” Ocwen Loan Serv’g, 2016 WL 278968, at
*3. FCL was not a party to the case at the time the protective order was entered. However, FCL
knew before August 2015 that LPI had the authority to supervise its case. See Dkt. No. 271-3, at
3 (LPI had agreed to supervise FCL’s case before August 2015). FCL now seeks a modification
that would allow LPI in-house employees to review Allergan’s confidential information, a desire
that was foreseeable at the time FCL’s case was consolidated—i.e., at the time FCL accepted the
protective order as governing. See Ocwen Loan Serv’g, 2016 WL 278968, at *3 (finding that
this factor weighed against modification because the movant’s desire “to review the evidence
obtained in the litigation” was foreseeable “at the time [the parties] negotiated and agreed to the
Protective Order.”). This factor cuts against FCL.

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C. The Parties’ Reliance on the Protective Order
“The reliance factor focuses on the extent to which the party opposing the modification
relied on the protective order in deciding the manner in which documents would be produced in
discovery.” Ocwen Loan Serv’g, 2016 WL 278968, at *3. It is “‘presumptively unfair’ to
modify protective orders which assure confidentiality and upon which the parties have
reasonably relied.” Id.
Allergan made huge documentary productions under the governing protective order, and
FCL made no objection to the applicability of the protective order to the discovery proceedings
until the end of October 2016. Allergan made its designations in reliance on the terms of the
two-tier protective order that provides only two options: either no designation, or a
“Confidential” designation. In other words, instead of multiple tiers of confidentiality (e.g.,
“Confidential,” “Highly Confidential,” “Attorneys’ Eyes Only,” etc.), the existing protective
order allows for only one enhanced level of protection (“Confidential”). This enhanced level
encompasses both “trade secrets or other confidential [information]” as well as “extremely
sensitive confidential information.”
Allergan agreed to the simplified two-tiered protective order with the understanding that
its highly sensitive documents could be viewed by in-house attorneys, but not in-house nonattorneys. The protective order is therefore distinguishable from nearly all of the protective
orders FCL cites from other cases in which its non-attorney designees have been granted access
to confidential information. See Dkt. No. 271-12 (stipulated protective order allowed access to
all “confidential” information, but not all “highly sensitive” or “confidential health”
information); Dkt. No. 271-13 (stipulated protective order allowed access to “confidential” but
not “highly sensitive” information); Dkt. No. 271-15 (same); Dkt. No. 271-17 (same); Dkt. No.

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271-18 (stipulated protective order allowed access to “proprietary” and “highly proprietary” but
not “outside counsel only” information); see also, e.g., Dkt. Nos. 271-21 and 271-22 (Lupin
proposes providing in-house non-attorneys access to “confidential,” not “highly confidential,”
information under a two-tiered protective order).
It would be unfair to penalize Allergan now, when discovery is nearly complete, for
relying on the existing two-tier protective order. See Ocwen Loan Serv’g, 2016 WL 278968, at
*3 (“The Court finds that the end of the discovery period, after the parties have relied upon the
Protective Order to produce documents in the case, is not the appropriate time to dispute the
Protective Order, into which the parties jointly entered.”). This factor also cuts against FCL.
D. Existence of Good Cause for the Modification
Good cause “requires changed circumstances or new situations warranting modification
of a protective order.” Ocwen Loan Serv’g, 2016 WL 278968, at *4 (internal quotation marks
omitted). “[T]he [C]ourt must weigh [the moving] party’s need for modification against the
other party’s need for protection, and ought to factor in the availability of alternatives to better
achieve both sides’ goals.” Id. (quoting Peoples v. Aldine Indep. Sch. Dist., No. 06-2818, 2008
WL 2571900, at *3 (S.D. Tex. June 19, 2008)).

FCL presents no evidence of changed

circumstances or new situations, as it knew of LPI’s supervisory obligations at the time of
consolidation. 4
Regarding alternatives, FCL states that it “will agree that no Allergan manufacturing or
process information may be disclosed to the [non-attorney] designees.” Dkt. No. 279, at 5. In
light of Allergan’s reliance on the protective order in making its designations, this is not
particularly helpful. FCL’s proposal would impose a three-tier protective order retroactively,
4

If anything, the “new information” that LPI has at least two in-house counsel weighs
against modification.
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after Allergan’s production of 1.5 million documents. Worse, Allergan would bear the costs of
the modification, as it would need to review the documents it has previously designated
“Confidential” and re-designate them as either “Confidential” or “Manufacturing/Process
Information.”
Allergan, meanwhile, proposes a compromise modification that “(1) [FCL]’s nonattorney litigation managers could access briefs and expert reports submitted in this case, but not
the underlying Confidential documents cited in those briefs or attached as exhibits; (2) to the
extent [FCL]’s non-attorney litigation managers want to view Confidential documents, including
those cited in briefs or expert reports, they could view them in the United States, but those
documents would not be permitted to leave the country, either physically or electronically.” Dkt.
No. 280, at 1-2 n.1. The Court accepts Allergan’s proposal as a reasonable accommodation of
FCL’s needs.
FCL has not established the necessity of any greater modification of the protective order.
This is not the situation, presented by some of the cases FCL cites (e.g., Dkt. Nos. 271-14, 27116, 271-19, 271-20, and 271-21), where no in-house counsel exist. Here, LPI has at least two:
Ms. Minaksi Bhatt and Ms. Kathryn Jones. See Dkt. No. 279-3, at 3. Ms. Bhatt states that LPI’s
litigation docket of 22 U.S. and 11 international patent actions is too heavy for her and Ms. Jones
to “effectively manage . . . on a daily basis.” Id. While those attorneys may be busy, the
protective order allows for access by attorneys’ clerical and paralegal staff, where responsibility
would still lie with the attorney.
Like the court in Cosmo Technologies Ltd. v. Lupin Ltd., this “Court is not persuaded
that [FCL] will be unfairly disadvantaged if non-attorney staff, who lack the same professional
obligations and are more likely involved in competitive decisionmaking, are prohibited from

13

accessing such information.” Dkt. No. 278-4 (concluding that plaintiff had “met its burden to
show that its proposed limitation [restricting access to confidential materials to attorneys] is
warranted”). FCL’s attempt to use the designated attorney’s workload to shift the responsibility
to non-attorneys in an entirely different division of the company would substantively change the
game. See U.S. Steel, 730 F.2d at 1468. In any event, Allergan’s proposed compromise relieves
the designated attorney of certain burdens the attorney would otherwise bear, to the extent FCL
wishes to exercise that option.
Finally, FCL complains that the volume of sealed filings hampers its non-attorney
supervisors’ ability to perform their duties and requires them to engage in onerous redaction
proceedings with Allergan’s counsel. But, first, this redaction process is already required for
anything designated Confidential by another defendant. See Dkt. No. 86, at 7. Second, and
more importantly, the Court has required the parties to file public redacted versions, as required
by law. Dkt. No. 208 (Sealing Order); see also Dkt. No. 86 at 12 (provision regarding redacted
filings of papers with protected material).
On the other hand, Allergan points out a real risk of disclosure: the FDA has issued new
bioequivalence standards, and Allergan’s documents could provide a basis for FCL to revise its
ANDA for FDA approval. FCL states that any amendments it makes to its ANDA would not
“escape notice,” and that the injury scenario is “wild speculation.” Dkt. No. 279, at 5.
As to any ANDA amendments, Allergan is not arguing about its ability to detect
disclosure; it is arguing that the protective order is intended to prevent it. As for Allergan’s
injury scenario, FCL’s (and LPI’s) own behavior indicates that this is a real concern. FCL, like
all of the other defendants, has agreed not to share any Confidential information with another
defendant without express written consent. See Dkt. No. 86, at 7. Meanwhile, LPI has recently

14

stated in a different action that disclosure to in-house individuals (attorneys or otherwise) poses a
danger of inadvertent disclosure in this context. LPI Letter Br., Shire Pharm. Dev. Inc. v. Lupin
Ltd., No. 1:16-cv-612, Dkt. No. 38 at 1-2 (D. Md. Jan. 17, 2016) (Lupin objected to designating
its ANDA as “confidential” instead of “highly confidential” because the former designation
would allow it to be seen by in-house designees and “creates an unacceptable risk of inadvertent
use or disclosure of information causing Lupin significant competitive harm.”).
Because Allergan has shown a need for protection and FCL has not shown a need for
modification of the existing protective order, this factor, like each of the others, cuts against
FCL.
For the reasons stated, the Court DENIES FCL’s motion to amend the existing protective
order. However, the Court accepts Allergan’s compromise approach as a basis for an agreedupon modification to the protective order. If the parties agree upon the modifications proposed
by Allergan, they may submit a new version of the protective order, modified as proposed by
Allergan, for the Court’s endorsement.
III. FCL Has Provided No Justification for or Right to an In-Person Hearing
FCL also moves for an in-court hearing on its motion to amend, but has provided no
reason for the Court to believe that an in-person hearing is needed. FCL’s motion merely states
that “FCL—and particularly Lupin—are frequent defendants in Hatch-Waxman cases throughout
the United States, and are greatly concerned with the potential implications of the outcome of the
Motion.” Dkt. No. 283, at 2. Parties are often concerned with the outcome of particular
motions, but the degree of a party’s concern is not a reason to hold a hearing. Particularly for
motions such as this one, where there are no live witnesses and no additional evidence for the
Court to hear beyond what has been submitted, a hearing is often unnecessary. The Local Rules

15

of this district provide that “the allowance of an oral hearing shall be within the sole discretion of
the judge to whom the motion is assigned.” Local Rule CV-7(g). For the following reasons, the
Court in this case exercises its discretion not to order an oral hearing on FCL’s motion to modify
the protective order.
Holding an in-court hearing on the issue raised by FCL would place scheduling burdens
on the attorneys forced to attend and would impose unnecessary costs on both sides. FCL states
that it is willing to bear the costs, but Allergan, in opposing the motion, indicates that it is not.
Furthermore, FCL “anticipates that, at most, such a hearing would require no more than an hour
of the Court’s time.” Dkt. No. 283, at 2. The Court will not order an unwilling party to pay
travel costs and for attorney preparation and in-court time for such a short hearing, with no
witnesses, and in which full briefing has already occurred. In short, there has been no showing
that the Court would be any better informed following a hearing than it is after having studied
the moving papers submitted by the parties. The motion is DENIED.
IV. Order Regarding Sealing
As previously explained in the Court’s Sealing Order, “the Court has an independent duty
to minimize the extent to which court proceedings are conducted in secret.” Dkt. No. 208. The
recent round of briefing is not in compliance with that order. Nothing on the face of either
party’s briefs indicates the inclusion of confidential material, and none of the exhibits, with the
possible exception of Dkt. No. 271-3, bear a “confidential” designation or otherwise appear to
contain confidential material. In fact, more than ten of FCL’s exhibits are public court filings.
Dkt. Nos. 271-12 through 217-22. And for its part, Allergan has also sought to seal items that
constitute public court records, Dkt. Nos. 278-2 through 278-4, as well as agency guidance, Dkt.
No. 278-1. This is not appropriate.

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The Court has sought to impress upon the parties the obligation to file moving papers and
exhibits in the public record and to move for sealing only with respect to material deserving of
that status. Unless the parties provide justification for the sealed status of their filings (Dkt. Nos.
271, 278-79, 281) by noon, Central Standard Time, on March 3, 2017, the Court will direct the
Clerk to unseal these documents.
IT IS SO ORDERED.
SIGNED this 28th day of February, 2017.

_____________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE

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