United States District Court, D. Delaware
Jennifer L. Hall United States Magistrate Judge.
before the Court is Plaintiff's Renewed Motion Regarding
a Protective Order Dispute. (D.I. 48.) Plaintiff Evertz
Microsystems Ltd. (“Evertz”) and Defendants Lawo
Inc., Lawo North America Corp., and Lawo AG (collectively,
“Lawo”) dispute the scope of a protective order
to govern the disclosure of confidential information produced
in discovery. Although Evertz and Lawo agree that a
protective order should be entered, they disagree about
whether Evertz's long-time outside counsel should have
access to Lawo's confidential technical information. For
the reasons discussed below, I conclude that Evertz's
outside counsel should be permitted access, and I order the
parties to submit a proposed protective order complying with
the restrictions set forth in this order.
February 12, 2019, Evertz sued Lawo for infringement of U.S.
Patent No. 8, 537, 838. (D.I. 1.) Before Lawo answered,
Evertz amended its complaint to include infringement
allegations for six additional patents. (D.I. 6.) Lawo
answered on July 10, 2019 and filed an amended answer on
August 7, 2019, asserting numerous affirmative defenses and
counterclaims. (D.I. 18, 22.) Evertz moved to dismiss some of
Lawo's counterclaims. (D.I. 26.) That motion remains
October 3, 2019, Evertz filed its first motion to resolve a
protective order dispute. (D.I. 35.) After reviewing the
parties' submissions (D.I. 41, D.I. 44) and hearing
argument on October 15, 2019, I denied the motion without
prejudice and directed the parties to engage in good faith
discussions to resolve the dispute based on the Court's
instructions. (D.I. 45.) The parties' efforts were
unsuccessful, and Evertz filed a renewed motion to resolve a
protective order dispute. (D.I. 48, 52.) Lawo filed a
response (D.I. 56), and I heard oral argument yesterday.
parties have conflicting views about the scope of the
protective order to be entered by the Court. Evertz requests
that Bhupinder Randhawa and Lawrence Yu of Bereskin &
Parr, LLP, outside counsel for Evertz, be permitted to have
access to material designated “Confidential” or
“Highly Confidential Technical - Attorneys' Eyes
Only.” Evertz is a Canadian company and Bereskin &
Parr, a Canadian law firm, has acted as Evertz's outside
counsel for nearly twenty years. (D.I. 52 at 2.)
has provided the following information about Randhawa and Yu,
which is unrebutted by Lawo. Randhawa and others at his firm
have represented Evertz for nearly twenty years. (D.I. 52 at
2.) Randhawa has participated in “patent preparation
and prosecution for Evertz, ” and he and others at his
firm have “provide[d] legal advice to Evertz on various
patent matters including, for example, patentability,
inventorship, and review of third-party patents.”
(Id., Ex. 2 ¶ 4.) Although Randhawa
“advise[s] Evertz on the technological aspects of
Evertz's IP enforcement, ” he “do[es] not
make determinations for Evertz about whether to pursue patent
litigation against competitors or whether to license
Evertz's patents to those competitors.”
(Id., Ex. 2 ¶ 7.)
wants the Bereskin & Parr attorneys on its litigation
team in this case because they have gained “expertise
in the relevant art” through their prior work with
Evertz. (D.I. 52 at 2.) According to Evertz, absent access to
Lawo's technical information, Randhawa and Yu will be
unable to meaningfully assist Evertz's litigation team
and Evertz will suffer substantial harm. (Id.) In
order to minimize the risk of inadvertent disclosure of
Lawo's information, Evertz has proposed that Randhawa and
Yu be subject to a so-called “prosecution bar”
that restricts them from performing patent prosecution work
involving related technologies while this litigation is
seeks to prevent Randhawa's and Yu's access, arguing
that it would create an unacceptably high risk of inadvertent
disclosure or use of its confidential information. (D.I. 56
at 1.) Lawo argues that the risk is unacceptable regardless
of the scope of any prosecution bar. (Id.) It also
contends that Evertz's proposed prosecution bar is
insufficient because it doesn't restrict Randhawa and Yu
from participating in post-grant review proceedings.
has a strong interest in choosing counsel to represent it,
and that counsel generally has a right to access all
materials in the case including those produced confidentially
during discovery. See British Telecomms. PLC v.
IAC/InterActiveCorp., 330 F.R.D. 387, 390 (D. Del.
2019). This general rule is not without limitations, and
counsel's access to confidential information may be
denied or limited when there is a high risk of inadvertent
disclosure. See Id. Determining if there is a high
risk of inadvertent disclosure is a fact-intensive inquiry
that must be conducted on a counsel-by-counsel basis. See
U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468
(Fed. Cir. 1984). When conducting this inquiry, courts should
not solely focus on whether counsel is in house or retained.
Rather, the critical question is whether counsel “is in
a position that creates a high risk of inadvertent
disclosure.” Motorola, Inc. v. Interdigital Tech.
Corp., C.A. No. 93-488-LON, 1994 WL 16189689, at *4 (D.
Del. Dec. 19, 1994).
analyzing the risk of inadvertent disclosure, courts consider
whether counsel is involved in “competitive
decisionmaking.” British Telecomms., 330
F.R.D. at 390-91. Competitive decisionmaking has been defined
as “‘counsel's activities, association, and
relationship with a client that are such as to involve
counsel's advice and participation in any or all of the
client's decisions (pricing, product design, etc.) made
in light of similar or corresponding information about a
competitor.'” PhishMe, Inc. v. Wombat Sec.
Techs., Inc., No. 16-403, 2017 WL 4138961, at *3 (D.
Del. Sept. 8, 2017) (quoting U.S. Steel Corp., 730
F.2d at 1468 n.3). Courts undertake this analysis not because
competitive decisionmakers take confidentiality obligations
any less seriously than their counterparts, but because it
helps assess whether counsel maintains a role that might make
it difficult to compartmentalize her knowledge. See
Motorola, Inc., 1994 WL 16189689, at *4; In re
Deutsche Bank Trust Co. Ams., 605 F.3d 1373, 1378 (Fed.
Cir. 2010) (“Courts have recognized . . . that there
may be circumstances in which even the most rigorous efforts
of the recipient of such information to preserve
confidentiality in compliance with the provisions of such a
protective order may not prevent inadvertent compromise. As
aptly stated by the District of Columbia Circuit, ‘[I]t
is very difficult for the human mind to compartmentalize and
selectively suppress information once learned, no matter how
well intentioned the effort may be to do so.'”
(quoting FTC v. Exxon Corp., 636 F.2d 1336, 1350
(D.C. Cir. 1980)).
court determines that there is a risk of inadvertent
disclosure or use of confidential information, it “must
balance this risk against the potential harm to the opposing
party from restrictions imposed on that party's right to
have the benefit of counsel of its choice.”
Blackbird Tech LLC v. Serv. Lighting & Elec.
Supplies, Inc., C.A. No. 15-53-RGA, 2016 WL 2904592, at
*2 (D. Del. May 18, 2016) (quoting In re Deutsche
Bank, 605 F.3d at 1380). One way to strike a balance
between these competing interests is with a protective order.
See British Telecomms., 330 F.R.D. at 390; see
also Fed. R. Civ. P. 26(c) (providing that a court, for
good cause shown, may issue an order protecting trade secrets
and other confidential technical or commercial information).
A court has broad discretion to fashion a protective order
with the safeguards it deems appropriate in order to reduce
the likelihood of inadvertent disclosure or use of
confidential information without eliminating ...