ATI Titanium v. US Magnesium
MEMORANDUM DECISION AND ORDER denying 463 US Magnesium, LLC's Motion in Limine No. 1 to Remove Stale "Attorneys Eyes Only" Designations for Trial. Signed by Magistrate Judge Jared C. Bennett on 9/16/22. (dla)
Case 2:17-cv-00923-HCN-JCB Document 625 Filed 09/16/22 PageID.21976 Page 1 of 11
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH
US MAGNESIUM, LLC, a Delaware
limited liability company,
ATI TITANIUM, LLC, a Delaware limited
AND ORDER DENYING US
MAGNESIUM, LLC’S MOTION IN
LIMINE NO. 1 TO REMOVE
“ATTORNEYS EYES ONLY”
DESIGNATIONS FOR TRIAL
Case No. 2:17-cv-00923-HCN-JCB
District Judge Howard C. Nielson, Jr.
Magistrate Judge Jared C. Bennett
District Judge Howard C. Nielson referred this case to Magistrate Judge Jared C. Bennett
under 28 U.S.C. § 636(b)(1)(A). 1 Before the court is US Magnesium, LLC’s (“US Mag”) Motion
in Limine No. 1 to Remove Stale “Attorneys Eyes Only” Designations for Trial, filed August
29th, 2022.2 The court concludes that oral argument is unnecessary in the resolution of this
matter. Accordingly, after carefully reviewing the Motion and associated briefing, the docket, and
applicable law, the court DENIES Motion in Limine No. 1.
The Protective Order in this case is modeled after the court’s standing protective order,
which expressly allows either side to designate certain information as “Attorneys Eyes Only”
ECF No. 304.
ECF No. 463.
Case 2:17-cv-00923-HCN-JCB Document 625 Filed 09/16/22 PageID.21977 Page 2 of 11
(“AEO”). 3 The categories include: manufacturing information; sensitive business information;
highly sensitive financial information; the identity of suppliers and customers; competitive
technical or business information; and non-public financial analyses. 4 The Stipulated Protective
Order contains one variation from the court’s standing order that allows each side to designate up
to two “Litigation Managers,” who are defined as in-house attorneys or paralegals who are
assigned to oversee the litigation and who will agree to be bound by the Stipulated Protective
Order. 5 Under section 6(a)(6) of the Stipulated Protective Order, Litigation Managers are
permitted to review AEO materials. 6 Defendant ATI Titanium, LLC (“ATI”) also previously
agreed to waive the “attorney” requirement for Litigation Managers to allow two of US Mag’s
executives to serve as Litigation Managers. 7
On April 16, 2018, US Mag first moved the court for an order re-designating all of ATI’s
AEO-designated production as Confidential. 8 In an order granting in part and denying in part
that motion, the court ordered ATI to “produce re-designated or de-designated versions of
documents previously designated as AEO that ATI has not re-designated.” 9 This order permitted
US Mag to file a new motion if, after review of ATI’s log and documents, US Mag “continue[d]
to believe in good faith that ATI [was] significantly over-designating documents as AEO.” 10
ECF No. 51 at § 2(b).
Id. at § 2(e).
Id. at § 6(a)(6).
ECF No. 121 at 9 n.8.
ECF No. 62.
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On October 19, 2018, US Mag filed another motion alleging that ATI was still overdesignating documents as AEO and renewing its request that the court order re-designation all of
ATI’s AEO designations to Confidential. 11 Once the motion was fully briefed, the court ordered
ATI to submit for in camera review a randomized sample of its AEO designated documents to
aid the court in determining whether ATI was unreasonably overusing the AEO designation. 12
ATI complied with the order, and the court reviewed a sample set of documents produced by
ATI. Magistrate Judge Paul M. Warner concluded the following:
Having considered the parties’ briefs and accompanying submissions, the court
concludes that ATI’s use of the AEO designation is reasonable. The court finds
that ATI complied with the August Order and has met its burden under the above
standard to show that disclosure of its AEO-designated production to US Mag’s
principals might be harmful. 13
Consequently, Judge Warner denied US Mag’s Motion. 14
On August 29, 2022, US Mag filed the instant Motion in Limine, seeking a court order to
remove the “Attorney’s Eyes Only” designation on all documents to be used as trial exhibits. 15 In
the Motion, US Mag contends that, as the parties prepare for trial, the AEO designations Judge
Warner deemed appropriate in 2018 have become “stale” and should be removed. Further, US
Mag argues that ATI “should be precluded from even making reference to the prior AEO
designations” at trial. 16 Defendants responded on September 9, 2022. 17 The court now denies US
ECF No. 114.
ECF No. 137.
ECF No. 165 at 7.
ECF No. 463.
Id. at 4.
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Under Fed. R. Civ. P. 26(c)(1)(G), a court may, for good cause, issue a protective order
(or permit a party to avail itself of an already issued protective order) to require that “a trade
secret or other confidential research, development, or commercial information not be revealed or
be revealed only in a specified way.” 18 A party seeking to avail itself of this Rule “must first
establish that the information sought is a trade secret [or other confidential research,
development, or commercial information].” 19 Further, that party must additionally “demonstrate
that its disclosure might be harmful.” 20 To establish the requisite harm, the party seeking
protection must make a “particular and specific demonstration of fact, as distinguished from
stereotyped and conclusory statements.” 21
“The court must balance the need for trade secrets [or other commercial information]
against the claim of injury resulting from disclosure.” 22 It is within the sound discretion of the
court to decide if the information sought is relevant and necessary, and whether the need
outweighs the harm of disclosure. 23 Likewise, if the information is deemed relevant and
ECF No. 541.
In re Cooper Tire & Rubber, Co., 568 F.3d 1180, 1188 (10th Cir. 2009).
Id. at 1190; Fed. R. Civ. P. 26(c)(1)(G).
In re Cooper Tire, 568 F.3d at 1190 (quoting Centurion, 665 F.2d at 325).
See, e.g., Layne Christensen Co. v. Purolite Co., 271 F.R.D. 240, 245 (D. Kan. 2010) (quoting
Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 n.16 (1981)); accord JENNER & BLOCK, MOORE’S
ANSWER GUIDE FEDERAL DISCOVERY PRACTICE § 16.29(b) (2017 ed.) (a showing of
“specific prejudice or harm” is required to limit the disclosure of trade secrets).
Centurion Indus., Inc. v. Warren Steurer & Assocs., 665 F.2d 323, 326 (10th Cir. 1981).
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necessary, the appropriate safeguards that should attend their disclosure by means of the
protective order are also a matter within the court’s discretion. 24
Although the present motion is a motion in limine, it is the functional equivalent of a
motion to reconsider that asks this court to revisit Judge Warner’s ruling regarding ATI’s use of
AEO designations. “Grounds warranting a motion to reconsider include (1) an intervening
change in controlling law, (2) new evidence previously unavailable, and (3) the need to correct
clear error or prevent manifest injustice.” 25
The court denies US Mag’s Motion in Limine and upholds the AEO designation covering
ATI’s six third-party supplier agreements (Defense Trial Exhibits D33-38) for two reasons. First,
Judge Warner ruled that the AEO designations for these documents was appropriate, and
circumstances have not changed to reconsider that ruling. Second, the AEO designation will not
prejudice US Mag because the Protective Order authorizes US Mag’s Litigation Consultants to
review any AEO information and participate fully in trial preparation. Additionally, as to US
Mag’s motion to exclude ATI from discussing the confidential nature of the six supplier
agreements at trial, the court will not rule on it now because the court needs the context of trial to
make the determination of whether that information is admissible. Each issue is discussed in
Judge Warner’s Prior Decision Does Not Warrant Reconsideration.
The court will not reconsider Judge Warner’s prior ruling. On August 3, 2018, Judge
Warner issued a Memorandum Decision directing ATI to review its AEO designations and to
Servants of the Paraclete v. Does, 204 F.3d 1005, 1012 (10th Cir. 2000).
Case 2:17-cv-00923-HCN-JCB Document 625 Filed 09/16/22 PageID.21981 Page 6 of 11
provide a log of materials that maintained AEO designations after being re-evaluated. 26 ATI
complied with the court’s order, acting in good faith in making its designations. 27 ATI stated that
it marked “only 1874 of the 44,180 records produced in this case as AEO, which represents
approximately 4% of ATI’s voluminous document production.” 28 Many of these documents
included agreements and communications with ATI’s third-party titanium sponge suppliers who
had offered long-term purchase contracts to ATI that resulted in the company’s declaration of the
economic force majure at issue in this case. Both suppliers’ agreements contained confidentiality
provisions that prohibited the disclosure of their agreements or terms without their express
Additionally, both suppliers notified ATI and provided sealed declarations to this court
stating that they did not consent to the disclosure of their identities or information to US Mag’s
top executives, and they expected ATI to honor the confidentiality provisions. 30 Consequently,
ATI argued that if it de-designated these documents, it would risk “a collateral lawsuit” and
“jeopardizing long-standing business relationships.” 31 ATI argued that the documents which
retained the AEO designation were proper under the categories defined by the Stipulated
Protective Order. 32 Judge Warner thoroughly and thoughtfully conducted the in camera review
ECF No. 92.
ECF No. 121 at 7.
Id at 9.
ECF No. 541-1 at ¶¶ 7-14; ECF No. 541-2 at ¶¶ 7-12.
ECF No. 121 at 4.
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and ruled in favor of ATI’s use of the AEO designation, finding that it was “reasonable” and
disclosure “might be harmful.” 33 US Mag’s objection to this decision was overruled. 34
Now, US Mag argues that ATI’s disclosure of its AEO-designated production to US
Mag’s principals is no longer harmful due to the passage of time. However, the same risk of
“collateral dispute” or “jeopardizing long-standing relationships” requires the ongoing protection
of “the identity of suppliers.” 35 ATI has reached out to these suppliers and neither will agree to
disclosure of their identities, contracts, pricing, financial information, or production capabilities
to US Mag’s executives. 36 ATI also informed these suppliers of the instant motion, and the
suppliers have renewed their objection to any disclosure. 37 Thus, the third-party supplier
agreements continue to fall within the categories protected by the Protective Order. Further, this
court has upheld AEO designations for materials like those ATI seeks to protect. 38 US Mag has
not provided the court with—and the court is not aware of—any case in this circuit that demands
removal of AEO designations simply because trial is impending.
Nevertheless, US Mag cites MacDermid Printing Sols. LLC v. Cortron Corp., 39 because a
court granted a motion to de-designate certain AEO documents identified for use as trial exhibits.
ECF No. 165 at 7.
ECF No. 178.
ECF No. 51 at § 2(b).
ECF No. 541-1 at ¶ 7; ECF No. 541-2 at ¶ 9.
ECF Nos. 541-3, 541-4.
See, e.g., Critical Nurse Staffing v. Four Corners Health Care, No. 2:13-cv-646-TS, 2016 WL
2733124, at *4 (D. Utah 2016) (enforcing protective order and finding that internal financial
spreadsheets may be designated AEO); Memdata, LLC v. Intermountain Healthcare, Inc, Case
No. 2:08-cv-190-TS-PMW, 2009 WL 10689800, at *1-2 (D. Utah 2009) (allowing party to
designate vendor agreements as AEO).
No. 3:08-cv-01649 (DEW), 2013 WL 12290837 (D. Conn. Sept. 13, 2013)
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There, the court determined that the plaintiff did not meet its burden of showing that good cause
exists for retaining the AEO designation, in part because certain documents “were created four or
five years ago. . . and . . . they are unlikely to reveal current confidential information or trade
secrets.” 40 The court stated that the plaintiff “has not contested their de-designation with the
specificity to convince the court that it has carried its burden.” 41
Here, however, ATI has reemphasized why the harm of disclosure outweighs US Mag’s
need for the AEO designations to be lifted. Judge Warner already ruled that the AEO
designations for ATI’s supplier agreements was appropriate, and the court cannot agree with US
Mag’s position that the passage of time requires this court to reconsider. Indeed, neither the
passage of time nor the imminence of trial constitutes new circumstances to reconsider Judge
Warner’s ruling that ATI’s disclosure of its AEO-designated production to US Mag’s principals
might be harmful. US Mag has not shown an intervening change in controlling law, new
evidence previously unavailable, or the need to correct clear error or prevent manifest injustice
such that the removal of AEO designations would be necessary. Therefore, the court denies US
Mag’s motion as to redesignating the six supplier agreements as AEO. 42
Id. at *3.
Although neither party raised the issue of whether ATI had standing to assert AEO status for
another entity’s documents, the court independently considered the argument (as it must) and
determines that ATI has standing to raise these issues because ATI’s interests (i.e., its own
contractual obligations to the confidential suppliers) provide a sufficient interest to raise the third
parties’ confidentiality claims. See, e.g., Sec. & Exch. Comm’n v. Goldstone, 301 F.R.D. 593, 646
(D.N.M. 2014) (“Moreover, ‘[a]bsent a claim of privilege, a party has no standing to challenge a
subpoena to a nonparty.’ ‘The exception to this rule is that “a party has standing to move to quash
a subpoena addressed to another if the subpoena infringes upon the movant's legitimate
interests.’”” (citations omitted)).
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US Mag is not Prejudiced by the AEO Designation on the Six Third-Party
Moreover, contrary to US Mag’s argument, maintaining the AEO designation covering
the six third-party supplier agreements will not prejudice US Mag. US Mag has designated two
Litigation Managers—a finance executive and a sales executive—who are authorized to review
any AEO information and participate fully in trial preparation. US Mag has not explained why
any others on the management team would need to see this information to successfully present
their case at trial. US Mag is also working with experts who have reviewed these materials and
consulted with counsel in expert discovery, and their testimony is most significant to US Mag’s
presentation of its case. Additionally, the Protective Order provides for the use of confidential
and AEO information at trial and allows the parties to limit dissemination of protected
information at the time it is proffered. 43 On balance, US Mag has not demonstrated that the need
for these materials to be viewed by other US Mag officers outweighs the potential harm to ATI if
the AEO designations were removed. 44
ECF No. 51 at § 4(f).
See, e.g., McAirlaids, Inc. v. Kimberly-Clark Corp., 299 F.R.D. 498, 501 (W.D. Va. 2014)
(finding it “unacceptable” for plaintiff’s president and other decision-makers to see defendant’s
confidential information, notwithstanding the potential hardship of not being able to consult
those employees); Parker Compound Bows, Inc. v. Hunter’s Mfg. Co., No. 5:14-cv-4, 2014 WL
12462305, at *3-4 (W.D. Va. Dec. 8, 2014) (denying decision-makers access to that material);
Philips Petroleum Co. v. Rexene Prods. Co., 158 F.R.D. 43, at *10 (D. Del. 1994) (denying CEO
access to confidential data due to risk of disclosure of “business’ current strategy, strength and
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The Court Reserves on the Issue of Whether ATI Can Refer to the AEO
Designation for the Six Supplier Agreements.
US Mag also requests in its Motion that ATI “be precluded from even making reference
to the prior AEO designations.” 45 However, the court does not have the context necessary to
decide that issue at this juncture. Under Fed. R. Evid. 403, the court “may exclude relevant
evidence if its probative value is substantially outweighed by a danger of . . . unfair prejudice,
confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting
cumulative evidence.” To determine whether a reference to the protected nature of the six
supplier agreements at issue is irrelevant, relevant and probative, or relevant and unduly
prejudicial (among other things), the court needs the context of the trial to make that
determination. Thus, the court denies the motion without prejudice subject to renewal at trial.
CONCLUSION AND ORDER
As demonstrated above, the AEO designation covering the six third-party supplier
agreements designated as Defense Trial Exhibits D33-38 is reasonable. Therefore, IT IS
HEREBY ORDERED that US Mag’s Motion in Limine No. 1 to Remove Stale “Attorneys Eyes
Only” Designations for Trial 46 is DENIED with the portion of the motion regarding disclosure of
the AEO designation for the six supplier agreements DENIED WITHOUT PREJUDICE. 47
IT IS SO ORDERED.
DATED this 16th day of September 2022.
ECF No. 463 at 4.
ECF No. 463.
The parties have agreed to de-designate other documents other than the six supplier
agreements. The court also orders de-designation according to the parties’ representations in their
respective memoranda in support of or in opposition to the motion at issue here.
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BY THE COURT:
JARED C. BENNETT
United States Magistrate Judge
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