Milwaukee Electric Tool Corporation et al v. Hilti Inc

Filing 107

ORDER signed by Judge J.P. Stadtmueller on 4/21/2017: GRANTING in part 90 Plaintiffs' Motion to Restrict and Replace Undesignated Documents; ORDERING Clerk of Court to seal relevant docket entries; DENYING without prejudice 94 Defendant's Motion for Order Setting Trial Dates; and GRANTING 99 Plaintiffs' Motion to Seal Documents. See Order. (cc: all counsel) (jm)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
MILWAUKEE ELECTRIC TOOL
CORPORATION, METCO BATTERY
TECHNOLOGIES LLC, AC (MACAO
COMMERCIAL OFFSHORE) LIMITED, and
TECHTRONIC INDUSTRIES CO. LTD.,
Plaintiffs,

Case No. 14-CV-1288-JPS

v.
HILTI, INC.,
Defendant.

MILWAUKEE ELECTRIC TOOL
CORPORATION, METCO BATTERY
TECHNOLOGIES LLC, AC (MACAO
COMMERCIAL OFFSHORE) LIMITED, and
TECHTRONIC INDUSTRIES CO. LTD.,

Case No. 14-CV-1289-JPS

Plaintiffs,
v.
CHERVON NORTH AMERICA, INC.
Defendant.
MILWAUKEE ELECTRIC TOOL
CORPORATION, METCO BATTERY
TECHNOLOGIES LLC, AC (MACAO
COMMERCIAL OFFSHORE) LIMITED, and
TECHTRONIC INDUSTRIES CO. LTD.,
Plaintiffs,
v.
POSITEC TOOL CORPORATION and
POSITEC USA, INC.,
Defendants.

Case No. 14-CV-1295-JPS

MILWAUKEE ELECTRIC TOOL
CORPORATION, METCO BATTERY
TECHNOLOGIES LLC, AC (MACAO
COMMERCIAL OFFSHORE) LIMITED, and
TECHTRONIC INDUSTRIES CO. LTD.,

Case No. 14-CV-1296-JPS

Plaintiffs,
v.
SNAP-ON INCORPORATED,

ORDER
Defendant.

In each of these four related patent cases, two motions have arisen that
can be addressed collectively. The first is Plaintiffs’ motion to seal and replace
certain documents that were publicly filed on the Court’s docket. The second
is Defendants’ motion for an order setting trial dates for each of the four
cases. For the reasons stated below, Plaintiffs’ motion will be granted and
Defendants’ motion will be denied.
1.

Plaintiffs’ Motion to Restrict Documents
Plaintiffs ask the Court to seal certain of their public filings in each of

the four cases. (Docket #119).1 These documents are, according to Plaintiffs,
properly designated as confidential under the protective order because they
contain sensitive business or technical information relating to research and
development. However, they were not filed under seal and do not bear the
proper confidentiality designation. Plaintiffs attribute this to inadvertence.

1

The case involving Defendant Snap-On Incorporated, 14-CV-1296, contains
all of the documents that are at issue in any of these cases. See (Docket #125 at 2–3).
The others contain only a subset of the relevant documents. Accordingly, as the
parties have done, the Court will refer to the docket in the Snap-On case for
purposes of this portion of the Order.

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Federal Rule of Civil Procedure 26(c)(1)(G) authorizes a court, “for
good cause,” to enter an order “requiring that a trade secret or other
confidential research, development, or commercial information not be
revealed or be revealed only in a specified way.” Fed. R. Civ. P. 26(c)(1)(G);
see also Gen. L. R. 79(d)(3). However, filing documents under seal conflicts
with the general rule that litigation in federal courts is open to the public.
Bond v. Utreras, 585 F.3d 1061, 1074 (7th Cir. 2009); Union Oil Co. of Cal. v.
Leavell, 220 F.3d 562, 567 (7th Cir. 2000). As such, a party seeking to seal a
document—prospectively or retroactively—must carry the heavy burden of
showing that the document contains information listed in Rule 26(c)(1)(G)
and what specific harm will result from public disclosure of the information.
Baxter Intern., Inc. v. Abbott Labs., 297 F.3d 544, 545 (7th Cir.2002); see also In
re Violation of Rule 28(D), 635 F.3d 1352, 1360 (Fed. Cir. 2011) (“Rule
26(c)(1)(G) is limited to commercial information that has. . .genuine
competitive or commercial significance.”). Mere desire that certain
information not be made public, or vague assertions of potential harm, are
not sufficient. Union Oil Co., 220 F.3d at 567; In re Specht, 622 F.3d 697, 701
(7th Cir. 2010); Chicago Mercantile Exch., Inc. v. Tech. Research Group, LLC, 276
F.R.D. 237, 241 (N.D. Ill. 2011).
The documents Plaintiffs want sealed fall into several categories. See
(Docket #121) (declaration of counsel with each relevant document attached).
First are documents that Plaintiffs produced without a confidentiality
designation and subsequently filed on the public docket. Next are a series of
documents that Defendants received from a third party without any
confidentiality designation and then filed on the public docket. Lastly, there
is a portion of a deposition transcript of an employee of Plaintiff Milwaukee

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Electric Tool Corporation, Jeffrey Zeiler. All of these documents have been
publicly available since no later than September 2015.
Defendants resist Plaintiffs’ request to seal these documents, arguing
that the request comes far too late and is actually a ploy to remove from the
public record certain information which they believe is damaging to
Plaintiffs’ claims. (Docket #125 at 7–10). They also assert that the documents,
to the extent they contain any technical information, concern only firstgeneration lithium-ion batteries, which are not at issue in these suits. Id. at
9–10. Plaintiffs reply that the documents comprise meeting notes,
correspondence, and testimony about its past research and development
efforts and, as such, they easily fall within the protections of the protective
order and Rule 26(c)(1)(G). (Docket #129 at 4–5). Plaintiffs further contend
that some of the documents are covered by confidentiality agreements with
third parties. Id. at 8–12.
The Court, having reviewed the parties’ submissions and each
document in question, finds that Plaintiffs have met their burden to show that
the documents concern non-public past research and development efforts.
Moreover, Plaintiffs have established that disclosure of such information
would place them at a competitive disadvantage in the marketplace and
would be inconsistent with their obligations under third-party confidentiality
agreements. See Wis. Alumni Research Found. v. Apple, Inc., No.
14–cv–062–wmc, 2015 WL 6453837, at *2 (W.D. Wis. Oct. 26, 2015) (granting
motion to seal documents containing product development correspondence);
In re Praxada (Dabigatran Etexilate) Prods. Liab. Lit., MDL No. 2385, 2014 WL
1715206, at *2 (S.D. Ill. Apr. 30, 2014) (denying motion to de-designate
documents containing non-public research and development information and
information covered by confidentiality agreements with third parties); In re
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Yazmin & Yaz (Drospirenone) Mktg., Sales Practices & Prods. Liab. Lit., MDL No.
2100, 2011 WL 5507057, at *4 (S.D. Ill. Nov. 10, 2011) (denying de-designation
of documents containing non-public research). Despite public disclosure of
certain aspects of Plaintiffs’ research efforts, their internal communications
on the matter are not thereby automatically made public. See Lynk Labs, Inc.
v. Juno Lighting LLC, No. 15 C 4833, 2016 WL 6135711, at *3 (N.D. Ill. Oct. 21,
2016). As such, good cause exists for retroactively sealing these documents.
Notably, Defendants’ opposition does not meaningfully address why
the documents do not contain information contemplated by Rule 26(c)(1)(G);
instead, Defendants allege only that Plaintiffs are trying to conceal
unfavorable information. But whether the information at issue militates
against Plaintiffs’ claims bears no relation to the propriety of sealing it. To the
extent that Defendants desire to use this information against Plaintiffs, they
are at liberty to do so. All that this Order requires is that the documents be
sealed from the public. See Culinary Foods, Inc. v. Raychem Corp., 151 F.R.D.
297, 300 (N.D. Ill. 1993) (once good cause shown, burden shifts to opposing
party to show why information should not be sealed).
More persuasive is Defendants’ argument that Plaintiffs have waited
too long to rectify their filing errors. Yet considering Plaintiffs’ present efforts
to correct those errors, their unchallenged assertion that their oversight was
accidental, and the lack of prejudice to Defendants, the Court finds that the
delay alone is not sufficient to warrant denial of the motions. Rather,

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considering the documents at issue and the applicable legal principles, the
Court finds that the motions to restrict should be granted.2
The docket entries Plaintiffs identified in each of the four cases will be
sealed. However, the Court cannot grant Plaintiffs’ request to replace those
docket entries with documents that bear the proper confidentiality
designation. See (Docket #119 at 1). While the Court appreciates Plaintiffs’
interest in ensuring that every extant copy of these documents bears the
correct confidentiality stamp, it is not the policy of the Court to alter
documents once filed. The most relief it will give is to seal the identified
entries, and it leaves to Plaintiffs the task of policing confidentiality
designations in future filings.
2.

Defendants’ Motion for Trial Dates
In Defendants’ motion, they seek guidance from the Court as to the

exact trial dates for each of these four cases. In its trial scheduling order, the
Court set trial in all four cases to begin on October 16, 2017. The parties agree
that they cannot try the four cases jointly, because a special provision of the
Patent Act prevents consolidation of trials against competitors. See 35 U.S.C.
§ 299(a). In order to promote early scheduling and availability of witnesses
and counsel, most of whom are from out of town, Defendants propose that
the Court presently set a schedule for these trials, allowing two weeks per

2

In anticipation of the parties’ future filings relating to claim construction
and summary judgment, this Court echoes the caution expressed in other branches
of the Court that careful attention and great caution should precede a decision to
file a document under seal; otherwise, tangential matters of sealing occupy the
Court’s limited resources, distract from the merits of the cases, and work an
injustice to the public’s right to know what goes on in the courts they pay for. See
Formax, Inc. v. Alkar-Rapidpak-MP Equip., Inc., No. 11-C-298, 2014 WL 792086, at *1–2
(E.D. Wis. Feb. 25, 2014); Healthwerks, Inc. v. Howmedica Osteonics Corp., Case No.
14-cv-93-PP, 2016 WL 398300, at *3–6 (E.D. Wis. Feb. 1, 2016).

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trial. Defendants propose the following schedule: (1) trial in Case No. 14-CV1289, involving Defendant Chervon North America, Inc., to begin October 16,
2017; (2) trial in Case No. 14-CV-1288, involving Defendant Hilti, Inc., to
begin October 30, 2017; (3) trial in Case No. 14-CV-1295, involving
Defendants Positec Tool Corporation and Positec USA, Inc., to begin
November 13, 2017, with a break for the Thanksgiving holiday; and (4) trial
in Case No. 14-CV-1296, involving Defendant Snap-On Incorporated, to begin
December 4, 2017.
Plaintiffs oppose Defendants’ request as premature. They contend that
there are too many other matters left open at this time to warrant setting firm
trial dates. These include the possibility of narrowing issues through
summary judgment or claim construction, which might obviate the need for
trial or reduce the length of time needed for each trial, and the possibility that
one or more of the cases may settle. In Plaintiffs’ view, it will be of no use to
set trial dates now only to have them almost certainly change as the time for
trial gets closer. Additionally, to the extent a schedule is set, Plaintiffs think
a break between the first and second trials is appropriate so that the parties
can re-evaluate their positions based on the result in the first case. Plaintiffs
also assert that the cases should be tried in their number order, not with the
Chervon case first as Defendants propose.
The Court will provide the following guidance. First, the Court is in
agreement with Plaintiffs that because of the remaining pretrial matters in
these cases, there is significant opportunity for narrowing the issues to be
tried or eliminating the need for a trial entirely. Thus, the time is not ripe to
set specific trial dates. Nevertheless, the Court will note that should these
cases require a trial, in the absence of agreement otherwise by all relevant
parties, they will be tried in the order in which they were filed. Further, the
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Court is of the view that because of its rigorous trial schedule—which begins
promptly at 8:30 each morning and does not conclude before 5:30 p.m. each
afternoon—these cases will not require two weeks each to be tried. The Court
believes that approximately four days per case will suffice, though that is a
flexible projection at this stage in the litigation.
Accordingly,
IT IS ORDERED that the following motions by Plaintiffs to restrict
and replace undesignated documents be and the same are hereby GRANTED
in part:
14-cv-1288, Docket #90;
14-cv-1289, Docket #139;
14-cv-1295, Docket #110; and
14-cv-1296, Docket #119;
IT IS FURTHER ORDERED that the Clerk of the Court shall seal the
following docket entries:
14-cv-1288, Docket #68-6, #43-13, #56-23, #56-16;
14-cv-1289, Docket #106-8, #61-13, #91-30;
14-cv-1295, Docket #77-6, #50-13; and
14-cv-1296, Docket #73-18, #25-13, #43-2, #43-5, #43-6, #43-7, #43-8,
#43-9, #43-10, #43-11, #61-39;
IT IS FURTHER ORDERED that the following motions by
Defendants for an order setting trial dates be and the same are hereby
DENIED without prejudice:
14-cv-1288, Docket #94;
14-cv-1289, Docket #144;
14-cv-1295, Docket #114; and
14-cv-1296, Docket #122; and
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IT IS FURTHER ORDERED that the following miscellaneous motions
to restrict documents filed in connection with the above and other motions
be and the same are hereby GRANTED:
14-cv-1288, Docket #99;
14-cv-1289, Docket #151, #152, #158;3
14-cv-1295, Docket #117; and
14-cv-1296, Docket #128.
Dated at Milwaukee, Wisconsin, this 21st day of April, 2017.
BY THE COURT:

J.P. Stadtmueller
U.S. District Judge

3

The two motions to restrict documents that are not directly related to the
substantive motions addressed herein are Docket #151 and #152 in Case No. 14-CV1289. Docket #151 is a motion to seal documents submitted in connection with
Plaintiffs’ motion to amend their complaint, a motion which was recently denied.
(Docket #174). Docket #152 concerns the sealed filing of an unredacted copy of
Plaintiffs’ answer to Chervon’s First Amended Answer, Affirmative Defenses, and
Counterclaims. Both motions will be granted.

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