ROBERT L. MILLER, Jr., District Judge.
Heraeus Medical GmbH, successor-in-interest to Heraeus Kulzer GmbH, moved to modify this court's protective orders so that Heraeus can use nine specific documents without the restrictions imposed by the protective orders. Biomet, Inc., Biomet Orthopedics, LLC, and Esschem, Inc. oppose Heraeus's motion. The court heard the parties' oral arguments on December 14, 2016. Based on its consideration of the parties' written submissions and oral arguments, the court denies Heraeus's motion.
Heraeus initiated this action in January 2009 to obtain discovery in aid of its trade secrets misappropriation litigation in Germany. The parties' written submissions include a general outline of the protective orders previously entered in this case; the history of those amendments needn't be repeated here. See Eighth Amd. Protective Ord., at 1-7.
In 2014, the Frankfurt Court of Appeals in Germany held that Biomet and certain of Biomet's affiliates had misappropriated Heraeus's trade secrets. The German court enjoined Biomet from manufacturing, offering, or distributing, or having manufactured, offered, or distributed any bone cement products developed using the misappropriated Heraeus trade secrets, including certain copolymers developed by Esschem. That decision became final when the Supreme Court of Germany declined to review the appeals court's decision. While the German court of appeals limited the scope of its decision to actions in Germany, at least some other European jurisdictions have held that the German court's factual findings bind them.
In 2015, after the German appeals court ruling and while an appeal was pending before the German Supreme Court, Heraeus asked this court to modify the protective orders to remove the cited documents—documents relied on in the German court's judgment—from the restrictions of the protective orders. Heraeus argued that amendment of the protective orders was necessary because Heraeus needed to use the cited documents in European proceedings and the German appeals court had determined that the trade secrets and confidential information contained in the cited documents belonged to Heraeus.
This court denied Heraeus's motion, holding that Heraeus hadn't shown good cause to remove the cited documents from the protective order, but invited the parties to negotiate streamlined procedures for using the cited documents. The parties subsequently stipulated to entry of the eighth amended protective order, which allows use of the cited documents if certain safeguards are implemented and contains a procedure to resolve an impasse regarding those safeguards.
About a year later, Heraeus filed this motion, which again asks to modify the protective orders. Heraeus says that based on the entry of the German judgment, it has filed actions to enforce its rights to its trade secrets in France, the Netherlands, Austria, Italy, Belgium, Finland, Denmark, Norway, and the United Kingdom because "[n]otwithstanding the Frankfurt Court's injunction, the Biomet Defendants, working in concert with Esschem, continue to sell the enjoined bone cement products in Europe with the exception of Germany." Heraeus has filed or seeks to file the cited documents in those courts under the terms of the eighth amended protective order. Heraeus argues that modification is needed because Biomet has used the eighth amended protective order to obstruct court proceedings in some forums. Heraeus further contends that Biomet and Esschem don't need this court to protect the cited documents because the German judgment and the cited documents themselves show that the confidential information contained in the cited documents belongs to Heraeus.
"In determining whether to vacate a protective order, courts consider the nature of the order — that is, its scope and whether it was court imposed or stipulated to by the parties."
The parties stipulated to entry of the eighth amended protective order. Heraeus is correct that the stipulated order provides for the possibility of amendment; it would be an unusual protective order that can never be amended. By requiring something beyond simply filing a motion in this court, the eighth amended protective order actually restricts the right to seek amendment, and doesn't support an amendment without a change in circumstances.
"The foreseeability factor . . . has been defined as asking whether the need for modification of the order was foreseeable at the time the parties negotiated the original stipulated protective order."
The reliance factor "is defined as the extent to which a party resisting modification relied on the protective order in affording access to discovered materials."
The good cause factor "implies changed conditions or new situations; a continuing objection to the terms of an order does not constitute good cause to modify or withdraw a protective order."
Heraeus notes that in several countries there have been no issues in complying with the eighth amended protective order's provision regarding the use of the cited documents because adequate confidentiality regimes already exist. But Heraeus argues that in Belgium, Denmark, and Norway,
Heraeus, as "the party seeking to modify the protective order[,] has the burden of demonstrating that good cause exists."
In Austria, the parties successfully negotiated a resolution to confidentiality issues by employing the procedure outlined in paragraph six of the eighth amended protective order. The court encourages the parties to consider the paragraph six procedure as a resource to resolve confidentiality disputes related to the cited documents.
The secondary change of circumstances raised by Heraeus is the final judgment in Germany. As the court understands it from the parties' presentations, the German court's factual findings, but not its reasoning or legal conclusions, bind other jurisdictions, and issues of ownership, misappropriation, and violation of a trade secret are issues of law. The finality of the German judgment might be a giant step toward the finish line for Heraeus; its factual preclusion would seem to the limit the range of arguments available to Biomet and Esschem concerning ownership and misappropriation. But it doesn't get Heraeus across the finish line.
Based on the foregoing, the court DENIES Heraeus's motion to modify the protective orders [Doc. No. 193].
SO ORDERED.