Milwaukee Electric Tool Corporation et al v. Chervon HK Limited
Filing
17
PROTECTIVE ORDER signed by Judge J.P. Stadtmueller on 8/25/2017 GRANTING 13 Parties' Joint Request for Entry of a Protective Order and SPECIFYING the terms as modified for confidential information produced or disclosed during this matter. See Order for further details. (Attachments: # 1 Exhibt A to Protective Order) (cc: all counsel)(jm)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
MILWAUKEE ELECTRIC TOOL
CORPORATION, METCO BATTERY
TECHNOLOGIES LLC, TTI (MACAO
COMMERCIAL OFFSHORE)
LIMITED, and TECHTRONIC
INDUSTRIES CO. LTD.,
Case No. 17-CV-651-JPS
Plaintiffs,
v.
CHERVON HK LIMITED, a/k/a
CHERVON LIMITED CORP. and
CHERVON NORTH AMERICA INC.,
PROTECTIVE ORDER
Defendants.
On August 23, 2017, the parties jointly requested entry of a stipulated
protective order and submitted a proposed draft of the order. (Docket #13).
The parties request that the Court enter such an order so that they may
avoid the public disclosure of confidential information and documents. Id.
at 1. Federal Rule of Civil Procedure Rule 26(c) allows for 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 Civ. L. R. 26(e).
The Court sympathizes with the parties’ request and will grant it,
but, before doing so, must note the limits that apply to protective orders.
Protective orders are, in fact, an exception to the general rule that pretrial
discovery must occur in the public eye. Am. Tel. & Tel. Co. v. Grady, 594 F.2d
594, 596 (7th Cir. 1979); Citizens First Nat’l Bank of Princeton v. Cincinnati Ins.
Co., 178 F.3d 943, 945–46 (7th Cir. 1999). Litigation must be “conducted in
public to the maximum extent consistent with respecting trade
secrets. . .and other facts that should be held in confidence.” Hicklin Eng’r,
L.C. v. Bartell, 439 F.3d 346, 348 (7th Cir. 2006).
Nonetheless, the Court can enter a protective order if the parties
have shown good cause and that the order is narrowly tailored to serve that
cause. Fed. R. Civ. P. 26(c); Citizens First, 178 F.3d at 945; Jepson, Inc. v. Makita
Elec. Works, Ltd., 30 F.3d 854, 858 (7th Cir. 1994) (even when parties agree to
the entry of a protective order, they still must demonstrate the existence of
good cause). The Court can find that even broad, blanket orders are
narrowly tailored and permissible when it finds that two factors are
satisfied:
(1) that the parties will act in good faith in designating the
portions of the record that should be subject to the protective
order; and
(2) that the order explicitly allows the parties to the case and
other interested members of the public to challenge the
sealing of documents.
County Materials Corp. v. Allan Block Corp., 502 F.3d 730, 740 (7th Cir. 2006).
The parties have requested the protective order in this case in good
faith. The parties report that this patent infringement case will entail the
disclosure of “confidential, competitively sensitive information about sales
and profitability, past, current and future product development, work
product development plans, and other similarly confidential information.”
(Docket #13 at 1). These are sufficient bases for the requested protective
order.
Page 2 of 13
The
parties’
proposed
protective
order,
however,
appears
overbroad. It provides that, if the parties need to file documents containing
confidential information with the Court, they may do so by filing the
documents under seal. In other words, the parties wish to be able to seal—
in their entirety—any documents that contain sensitive information. This
departs from the Court’s desire to ensure that every phase of the trial occurs
in the public eye to the maximum extent possible. See Hicklin Eng’r, 439 F.3d
at 348. While the Court understands that some documents will need to be
sealed entirely, others may contain only small amounts of confidential
information, and so redaction of that information may be more appropriate.
The Court, thus, has crafted its own protective order to enter in this
case. The Court’s protective order still allows the parties to file documents
under seal, but does not presume that every confidential document should
be filed under seal in its entirety. Rather, it contemplates that the parties
will use their judgment to determine the best way to protect confidential
information in submitted documents. The order also includes a provision
consistent with the Court’s and this district’s standard practice of allowing
any party and any interested members of the public to challenge the sealing
of documents.
Finally, the Court must note that it subscribes to the view that its
decision-making process must be transparent and as publicly accessible as
possible. Thus, the Court preemptively warns the parties that it will not
enter any decision under seal.
Because the parties’ proposed protective order adequately complies
with the standards set forth above (after the Court’s minor changes), the
Court will enter an order based on the parties’ proposed order.
Accordingly,
Page 3 of 13
Pursuant to the joint request of the parties (Docket #13), the Court
finds that the exchange of sensitive information between the parties and/or
third parties other than in accordance with this Order may cause
unnecessary damage and injury to the parties and to others. The Court
further finds that the terms of this Order are fair and just and that good
cause has been shown for entry of a protective order governing the
confidentiality of documents produced in discovery, answers to
interrogatories, answers to requests for admission, and deposition
testimony.
IT IS THEREFORE ORDERED that, pursuant to Civil Local Rule
26(e) and Federal Rule of Civil Procedure 26(c)(1)(D),
(A) DESIGNATION OF CONFIDENTIAL INFORMATION.
Designation of information under this Order must be made by placing or
affixing on the document or material, in a manner that will not interfere
with its legibility, the word “CONFIDENTIAL.” Any confidential
information not reduced to documentary, tangible, or physical form, or
which cannot be conveniently designated as set forth above, shall be
designated by the disclosing party by informing the receiving party of the
designation in writing at or prior to the time of disclosure.
(1)
One
who
provides
material
may
designate
it
as
“CONFIDENTIAL” only when the person in good faith believes it contains
trade secrets or nonpublic technical, commercial, financial, personal, or
business information.
(2) Except for documents produced for inspection at the party’s
facilities, the designation of confidential information must be made prior
to, or contemporaneously with, the production or disclosure of that
information. In the event that documents are produced for inspection at the
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party’s facilities, such documents may be produced for inspection before
being marked confidential. Once specific documents have been designated
for copying, any documents containing confidential information will then
be marked confidential after copying but before delivery to the party who
inspected and designated the documents. There will be no waiver of
confidentiality by the inspection of confidential documents before they are
copied and marked confidential pursuant to this procedure.
(3) Portions of depositions of a party’s present and former officers,
directors, employees, agents, experts, and representatives must be deemed
confidential only if they are designated as such when the deposition is taken
or if they are designated in writing within fourteen (14) days of the date of
deposition.
(B)
DISCLOSURE
AND
USE
OF
CONFIDENTIAL
INFORMATION. Information or documents designated as confidential
under this Order must not be used or disclosed by the parties or counsel for
the parties or any persons identified in this paragraph for any purposes
whatsoever other than preparing for and conducting the litigation in which
the information or documents were disclosed (including appeals). The
parties and counsel for the parties must not disclose or permit the
disclosure of any documents, information, or tangible things designated as
confidential under this Order to any other person or entity, except that
disclosures may be made in the following circumstances:
(1) Disclosure may be made to outside counsel for a party. Disclosure
may also be made to employees of such outside counsel for the parties who
have direct functional responsibility for the preparation and trial of the
lawsuit. Any such employee to whom such outside counsel for the parties
makes a disclosure must be advised of, and become subject to, the
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provisions of this Order requiring that the documents and information be
held in confidence.
(2) Subject to the following provisions, disclosure may be made only
to in-house counsel of a party required in good faith to provide assistance
in the conduct of the litigation in which the information will be disclosed:
(a) Before disclosure to any in-house counsel pursuant to
subsection (2), above, the party desiring to make such disclosure
shall notify the party whose confidential information will be
disclosed of the following information regarding the in-house
counsel to whom disclosure is proposed: name, title, and a
description of such in-house counsel’s current and reasonably
foreseeable primary job duties and responsibilities. No disclosure of
confidential information to the in-house counsel may be made until
the soonest to occur of: (1) the five (5) day period for objection set
forth in subsection (b), below, has passed without objection; (2) the
fourteen (14) day period for seeking relief from the Court as set forth
in subsection (c) has passed without a motion being filed; (3) the
Court has entered an Order refusing to prevent the disclosure; or (4)
the party whose confidential information is to be disclosed has
approved the disclosure.
(b) The party shall have five (5) days from notice of the
information in subsection (a), above, to object to disclosure of
confidential information to the in-house counsel by providing
written notice of the objection stating with particularity the
ground(s) for the objection, which objection must be based on that
party’s good faith belief that disclosure will result in specific and
identifiable business or economic harm to the party.
Page 6 of 13
(c) If after consideration of the objection, the party desiring to
disclose the confidential information to an in-house counsel refuses
to withdraw the in-house counsel, that party shall provide notice to
the objecting party. Thereafter, the objecting party may move the
Court, within fourteen (14) days of receiving such notice, for a
protective order preventing disclosure to the in-house counsel. Any
such motion for a protective order must be filed on an expedited
basis pursuant to Civil Local Rule 7(h). A failure to file a motion
within the fourteen (14) day period, absent an agreement of the
parties to the contrary or for an extension of such fourteen (14) day
period, shall operate as an approval of disclosure of confidential
information to the in-house counsel. The parties agree to cooperate
in good faith to shorten the time frames set forth in this paragraph if
necessary to abide by any discovery or briefing schedules.
(2) Disclosure may be made to court reporters engaged for
depositions and those persons, if any, specifically engaged for the limited
purpose of making photocopies of documents. Before disclosure to any
such court reporter or person engaged in making photocopies of
documents, such reporter or person must agree to be bound by the terms of
this Order.
(3) Subject to the following provisions, disclosure may be made to
consultants, investigators, or experts (collectively “experts”) employed by
the parties or counsel for the parties to assist in the preparation and trial of
the lawsuit:
(a) Before disclosure to any expert, the expert must be
informed of and agree to be subject to the provisions of this Order
Page 7 of 13
requiring that the documents and information be held in confidence
by executing the agreement attached hereto as Exhibit A.
(b) Furthermore, before disclosure to any expert hereunder,
the party desiring to make such disclosure shall notify the party
whose confidential information will be disclosed of the following
information regarding the expert to whom disclosure is proposed:
name, address, curriculum vitae, current employer, employment
history, including consulting relationships, for the past five years,
and any previous or current relationship (personal or professional)
with any of the parties (and/or their predecessors or successors-ininterest). Such notice shall also include a copy of the agreement
attached as Exhibit A signed by the expert. No disclosure of
confidential information to the expert may be made until the soonest
to occur of: (1) the five (5) day period for objection set forth in
subsection (c), below, has passed without objection; (2) the fourteen
(14) day period for seeking relief from the Court as set forth in
subsection (d) has passed without a motion being filed; (3) the Court
has entered an Order refusing to prevent the disclosure; or (4) the
party whose confidential information is to be disclosed has
approved the disclosure.
(c) The party shall have five (5) days from notice of the
information in subsection (b), above, to object to disclosure of
confidential information to the expert by providing written notice of
the objection stating with particularity the ground(s) for the
objection, which objection must be based on that party’s good faith
belief that disclosure will result in specific and identifiable business
or economic harm to the party.
Page 8 of 13
(d) If after consideration of the objection, the party desiring to
disclose the confidential information to an expert refuses to
withdraw the expert, that party shall provide notice to the objecting
party. Thereafter, the objecting party may move the Court, within
fourteen (14) days of receiving such notice, for a protective order
preventing disclosure to the expert. Any such motion for a protective
order must be filed on an expedited basis pursuant to Civil Local
Rule 7(h). A failure to file a motion within the fourteen (14) day
period, absent an agreement of the parties to the contrary or for an
extension of such fourteen (14) day period, shall operate as an
approval of disclosure of confidential information to the expert. The
parties agree to cooperate in good faith to shorten the time frames
set forth in this paragraph if necessary to abide by any discovery or
briefing schedules.
(4) Disclosure may be made to the Court, including the United States
District Court for the Eastern District of Wisconsin, any appellate court with
jurisdiction over any appeal from this Action (collectively the “Court”), and
Court personnel assisting the Court in its adjudicative functions.
(5) Notwithstanding subsections (1)–(4), above, confidential
information that comprises or discloses a party’s past, current, or future
product development or designs, or business or marketing plans or
strategies, may not be disclosed to anyone employed or retained by the
other party to (or who actually does) draft patent claims or amendments to
patent claims for the other party.
(C)
MAINTENANCE
OF
CONFIDENTIALITY.
Except
as
provided in paragraph (B), counsel for the parties must keep all documents,
information and tangible things designated as confidential that are received
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under this Order secure within their exclusive possession and must place
such documents in a secure area. Nothing in this Order shall be construed
to preclude a party from seeking further confidentiality protections for
specific documents, including restrictions on access to specific documents
by any of the persons identified in paragraph (B).
(1) All copies, duplicates, extracts, summaries, or descriptions
(hereinafter referred to collectively as “copies”) of documents or
information designated as confidential under this Order, or any portion
thereof, must be immediately affixed with the word “CONFIDENTIAL” if
that word does not already appear.
(2) To the extent that any answers to interrogatories, transcripts of
depositions, responses to requests for admissions, or any other papers filed
or to be filed with the Court reveal or tend to reveal information claimed to
be confidential, these papers or any portion thereof must be filed under seal
by the filing party with the Clerk of Court utilizing the procedures set forth
in General Local Rule 79(d). If a court filing contains information,
documents, or other materials that were designated “CONFIDENTIAL” by
a third party, the party making the filing shall provide notice of the filing
to the third party.
Any party filing information claimed to be confidential must include
with that filing either: (1) a motion to seal the material pursuant to General
Local Rule 79(d); or (2) an objection to the designation of the information as
confidential. If such an objection is made, the person having designated the
information as confidential may file a motion to seal under General Local
Rule 79(d) within twenty-one (21) days of the objection.
To the extent that any records designated confidential are filed with
the Court, or are substantively incorporated in any papers to be filed with
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the Court, the records and papers must be redacted only to the extent
necessary. If the parties seek to seal a document, either in part or in full,
they must file a motion to seal that document pursuant to General Local
Rule 79(d), together with a redacted copy on the record. They must also
simultaneously file unredacted copies under seal with the Clerk of Court.
The parties shall act in good faith in designating records to be filed, in whole
or in part, under seal.
(D) CHALLENGES TO CONFIDENTIALITY DESIGNATION. A
party or an interested member of the public may challenge the designation
of confidentiality by motion. The movant must accompany such a motion
with the statement required by Civil Local Rule 37. The party prevailing on
any such motion is entitled to recover as motion costs its actual attorney
fees and costs attributable to the motion.
(E)
INADVERTENT
DISCLOSURE
OF
CONFIDENTIAL
INFORMATION. Inadvertent or unintentional production of confidential
information not designated “CONFIDENTIAL” shall not be deemed a
waiver in whole or in part of a claim for confidential treatment. Upon
request by the originating party, the receiving party shall thereafter treat
such information as if it were designated confidential hereunder. The
originating party shall provide, as soon as practicable, a replacement copy
of the information with the designation applied, whereupon, the receiving
party shall return or destroy, as applicable, the non-designated copy. Any
receiving party will also make all reasonable efforts to retrieve any such
documents from anyone who had received the documents prior to the
notification to the receiving party of the inadvertent failure to designate the
material as confidential and who is no longer permitted to access the
documents under the new designation. The receipt of documents or
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information will not operate as an admission by the receiving party that any
particular information contains (or does not contain) or reflects (or does not
reflect) trade secrets or any other type of confidential information.
(F) CONCLUSION OF LITIGATION. Within thirty (30) days of the
conclusion of the litigation, all material not received in evidence and treated
as confidential under this Order must be returned to the originating party
or, in the case of electronic information, destroyed. The parties may
stipulate to the destruction of non-electronic information in lieu of return.
A certification of return or destruction signed by counsel shall be provided
to the originating party within ten (10) days of the destruction or return of
the material.
(G) This Order shall become effective as between the parties
immediately upon submission to the Court for approval, notwithstanding
the pendency of approval by the Court. If approval by the Court is
ultimately withheld or made conditional, no party shall treat any
documents, information, or tangible things designated as confidential
under this Order produced prior to that time other than as provided in this
Order without giving the originating party sufficient advance notice to
allow for application to the Court for additional relief.
(H) Nothing herein shall prevent the parties from agreeing in writing
or on the record during a deposition or hearing in this Action to alter or
waive the provisions or protections provided for herein with respect to any
confidential information under this Order.
(I) This Order shall afford all non-parties who produce any
confidential information in this Action, either voluntarily or pursuant to a
subpoena, court order, or discovery request, the same protections afforded
to the parties to this Action. Specifically, non-parties shall be entitled to
Page 12 of 13
mark any confidential information as “CONFIDENTIAL.” The parties to
this Action will treat such marked information per the terms of this Order
and such marked documents shall be entitled to the same protections under
this Order as documents marked by parties to this Action. A non-party’s
use of this Order to protect its documents or information does not entitle
that non-party access to the documents or information produced by any
party.
(J) Unless otherwise indicated, all references to days in this Order
are to calendar days.
Dated at Milwaukee, Wisconsin, this 25th day of August, 2017.
BY THE COURT:
____________________________________
J. P. Stadtmueller
U.S. District Judge
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