ORDER ON MOTION FOR ISSUANCE OF LETTER ROGATORY
JOHN C. NIVISON, Magistrate Judge.
The matter is before the Court on Plaintiffs' Amended Motion for Order Issuing Letters Rogatory (ECF No. 150). Through the motion, Plaintiffs request the production of evidence by the following Canadian entity, which is not party to this litigation and which is not subject to the compulsory process of this Court in the context of this litigation:
EWOS Canada Ltd.
7721-132 Street
Surrey, BC V3W 4M8
Canada
Legal Standard
A letter rogatory, or letter of request, is "a formal request from a court in which an action is pending, to a foreign court to perform some judicial act." 22 C.F.R. § 92.54. Letters rogatory are commonly used to facilitate the taking of evidence from non-parties located in foreign jurisdictions. Id.; Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 248 n.1 (2004). In addition to document discovery and other forms of non-testimonial discovery, a letter rogatory may include a request for the deposition of a foreign witness. Fed. R. Civ. P. 28(b)(2). A letter rogatory requesting a deposition may issue "on appropriate terms after an application and notice" and "without a showing that taking the deposition in another manner is impracticable or inconvenient." Id. "Requests rest entirely upon the comity of courts toward each other, and customarily embody a promise of reciprocity." 22 C.F.R. § 92.54.
This Court has inherent authority to issue letters rogatory and may issue letters rogatory directly to a foreign tribunal. 28 U.S.C. § 1781(b)(2). Google Inc. v. Rockstar Consortium U.S. LP, No. 4:13-cv-05933, 2014 WL 8735114, at *1 (N.D. Cal. Oct. 3, 2014). The decision to exercise that authority is a matter of discretion. Triumph Aerostructures, LLC v. Comau, Inc., No. 3:14-CV-02329, 2015 WL 5502625, at *2 (N.D. Tex. Sept. 18, 2015); Rockstar Consortium, 2014 WL 8735114, at *1. A court generally will not weigh the evidence sought or predict whether the evidence will be obtained in the foreign jurisdiction. Rockstar Consortium, 2014 WL 8735114, at *1. However, "[j]udicial supervision of discovery should always seek to minimize its costs and inconvenience and to prevent improper uses of discovery requests." Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court for S. Dist. of Iowa, 482 U.S. 522, 546 (1987). Additionally, the Court's exercise of discretion is informed by the discovery standards set forth in Rule 26(b) of the Federal Rules of Civil Procedure. Triumph Aerostructures, LLC, 2015 WL 5502625, at *3. Rule 26 authorizes the following discovery:
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable.
Fed. R. Civ. P. 26(b)(1).
Analysis
Plaintiffs seek discovery from EWOS Canada Ltd. According to Plaintiffs, EWOS supplied Defendants with feed used in Defendants' aquaculture operations. In particular, Plaintiffs request information regarding the composition of the feed EWOS supplied to Defendants. In this case, the material issues include the composition of the feed that Defendants have provided to their fish during the period of alleged infringement,1 and whether feed produced before Plaintiffs filed their applications (limited to 1997-1999) would have met the specifications of the Patents-in-Suit, such that the use of said feed for the purposes identified in the Patents-in-Suit was understood in the prior art or was obvious to the person of ordinary skill in the art. The requested discovery thus is relevant to the claims, counterclaims, and defenses at issue in this action. Given that Plaintiffs' requests are designed to elicit relevant information, the requests are within the scope of discovery and, therefore, are presumptively appropriate,2 are not unduly burdensome, and are not the product of improper motive.
Conclusion
Based on the foregoing analysis, the Court grants Plaintiffs' Amended Motion for Order Issuing Letters Rogatory (ECF No. 150). The approved Letter Rogatory is attached to this Order. Plaintiffs may present their Letter Rogatory to the Supreme Court of British Columbia, Canada, provided this Order and the Court's Consent Confidentiality Order are attached thereto.
CERTIFICATE
Any objections to this Order shall be filed in accordance with Fed. R. Civ. P. 72.
LETTER ROGATORY TO THE SUPREME COURT OF BRITISH COLUMBIA, CANADA
The United States District Court for the District of Maine presents its compliments to the Supreme Court of British Columbia, Canada, and requests international judicial assistance to obtain evidence to be used in a civil proceeding before this Court in the above captioned matter. The United States District Court for the District of Maine is a competent court of law and equity which properly has jurisdiction over this proceeding and is authorized to issue letters rogatory pursuant to, inter alia, 28 U.S.C. § 1781(b)(2) and Rule 28(b) of the Federal Rules of Civil Procedure.
In this action, Plaintiffs and Counter Claim Defendants Marical Inc., Europharma AS, and Europharma Inc. Canada ("Plaintiffs"), allege that Defendants and Counter Claim Plaintiffs Cooke Aquaculture Inc., Cooke Aquaculture USA Inc., True North Salmon Co. Ltd., True North Salmon US Inc., True North Sales US Inc., and Salmones Cupquelan SA, Co. ("Defendants"), produce and import salmon raised by methods that infringe United States Patent No. 6,463,883, United States Patent No. 6,475,792, United States Patent No. 6,481,379, and United States Patent No. 6,564,747, which patents-in-suit teach methods for raising pre-adult anadromous fish. (Complaint, ECF No. 1.) By way of counterclaim, Defendants seek a declaratory judgment of invalidity and noninfringement. (Answer and Counterclaims, ECF No. 16.)
This Court is persuaded that the cause in question cannot be justly resolved without the production of documents and possibly deposition testimony from the following entity within your jurisdiction:
EWOS Canada Ltd.
7721-132 Street
Surrey, BC V3W 4M8
Canada
Upon review of the Plaintiffs' requests for issuance of letter rogatory and their written representations concerning the same, this Court has concluded that the just resolution of the claims and counterclaims in this action requires the production of the evidence requested, which evidence is probative of material facts relevant to Plaintiffs' claims of patent infringement and Defendants' counterclaims of patent invalidity. Accordingly, this Court requests the assistance of the Supreme Court of British Columbia to secure production of the evidence outlined herein.
Discovery in the action is subject to the Court's Consent Confidentiality Order, attached hereto, which Order has been entered to protect the confidentiality of documents produced by the parties, and by third parties, and which provides, at paragraph 17: "The terms of this Order shall be applicable to any nonparty who produces information in connection with this action which is designated by such nonparty or a party hereto as Confidential or Highly Confidential."
This request is made with the understanding that it will in no way require any person to commit any offense, or to undergo a broader form of inquiry than he or she would if the litigation were conducted in a Canadian court. The requesting Court is satisfied that the evidence sought to be obtained through this request is relevant and necessary and cannot reasonably be obtained by other methods. Because this Court lacks authority to compel participation of EWOS Canada Ltd. and because such participation is necessary in order that justice be served in the above-captioned proceedings, this Court respectfully requests assistance from the Supreme Court of British Columbia.
The applicants for this Letter are Plaintiffs and it is respectfully requested that the executed request be returned to lead Counsel for Plaintiffs:
Brian T. Moriarty
HAMILTON BROOK SMITH & REYNOLDS P.C.
530 Virginia Road
P.O. Box 9133
Concord, MA 01742-9133
bmoriarty@hbsr.com
(617) 607-5960
I. Summary of the Action
Plaintiffs' Complaint asserts that Defendants infringe one or more claims of the U.S. Patents referenced above, each of which patents pertains to methods of raising pre-adult anadromous fish, such as salmon. The representative claims before this Court recite adding feed for fish consumption and specify that the fish feed contains an amount of sodium chloride (NaCl) and/or amino acids, including tryptophan. Plaintiffs allege that Defendants have infringed the Patents based, in part, on Plaintiffs' use of fish feed supplied to Plaintiffs by EWOS Canada Ltd. Defendants allege that the Patents-in-Suit are invalid in-part because feeding fish a diet that contains sodium chloride (NaCl) and amino acids, including tryptophan, was known in the art before Plaintiffs filed the applications for the Patents-in-Suit. Accordingly, important factual issues in this action include the composition of the feed that Defendants have provided to their fish during the period of alleged infringement,1 and whether feed produced before Plaintiffs filed their applications (limited to 1997-1999) would have met the specifications of the Patents-in-Suit, such that the use of said feed for the purposes identified in the Patents-in-Suit was understood in the prior art or was obvious to the person of ordinary skill in the art.2
II. Evidence Requested from EWOS Canada Ltd.
This Court requests that the Supreme Court of British Columbia summon EWOS Canada Ltd. to produce or make available for inspection the following documents:
1. Documents sufficient to show the quantity of each and every type of fish feed, including feed for salmon, that EWOS Canada Ltd. manufactured or produced for, or delivered or provided to any Defendant or any agent or subsidiary thereof between September 15, 2007 and the present.
2. Documents sufficient to show the composition of each and every fish feed, including feed for salmon, that EWOS Canada Ltd. manufactured or produced for, or delivered or provided to any Defendant or any agent or subsidiary thereof between September 15, 2007 and the present, such as identifying each ingredient by weight, volume, or mole percent.
3. Documents sufficient to show the quantity of each and every type of fish feed having the names that include "EW," "EWOS," "Dynamic," "V. Vita," "Transfer," "SuperSmolt," "S Smolt," "EWOS Transfer," and "EWOS Transfer SuperSmolt" that have been provided by EWOS Canada Ltd. to any Defendant or any agent or subsidiary thereof between September 15, 2007 and the present.
4. Documents sufficient to show the composition, including all ingredients, salts, and amino acid content, of each and every type of fish feed having a name that "EW," "EWOS," "Dynamic," "V. Vita," "Transfer," "SuperSmolt," "S Smolt," "EWOS Transfer," and "EWOS Transfer SuperSmolt" that have been provided by EWOS Canada Ltd. to any Defendant or any 1 Defendants have admitted, in response to interrogatories, that some of the feed they provide to their fish has come from EWOS Canada Ltd.
5. Documents sufficient to show custom feed orders prepared for or delivered to any Defendant or any agents or subsidiary thereof, and documents sufficient to show the composition, including all ingredients, salts, and amino acid content, of each and every custom feed order.
6. All communications, including emails, between EWOS Canada Ltd. and any person or agent associated with any Defendant and any agent or associate thereof regarding any of the following topics: (1) SuperSmolt; 2) Plaintiffs; 3) Salmon food ingredients, including sodium chloride (NaCl) and amino acid content; any patents or patent applications in the US or Canada directed to aquaculture or fish feeding; this lawsuit; and any custom food orders.
7. Samples of any fish feed provided to any Defendant that have sodium chloride (NaCl) or amino acids.
8. An Affidavit from the Keeper of Records attesting to the authenticity of any documents produced.
In addition to the production of documents, after production of the documents the Supreme Court of British Columbia might authorize, this Court might request the Supreme Court of British Columbia summon EWOS Canada Ltd. to produce a suitable corporate representative to appear before a person empowered under British Columbia law to administer oaths and take testimony, so that the representative may give testimony under oath or affirmation on the topics of the content of feeds produced by EWOS Canada Ltd., the documents produced in response to this Letter Rogatory, and the business relationship between EWOS Canada Ltd. And Defendants. The deposition would be taken by the parties' legal representatives, including their counsel based in the United States, and recorded verbatim, including by audio and/or video recording.
III. Reimbursement for Costs
To the extent the Court incurs expenses associated with providing assistance in response to this Letter Rogatory, this Court will see that the Court of Queen's Bench of New Brunswick is reimbursed by Plaintiffs. If the Supreme Court of British Columbia determines that Skretting Canada or Corey Nutrition will incur significant costs to provide the requested discovery, the reimbursable expenses will be borne by Plaintiffs.
IV. Reciprocity
This Court stands ready to extend similar assistance to the judicial tribunals of Canada pursuant to 28 U.S.C. § 1782(a).
/s/John C. Nivison
John C. Nivison
United States Magistrate Judge
United States District Court, District of Maine
202 Harlow Street
Bangor, Maine 04401
(207) 945-0315
Dated this 20th day of July 20, 2016
UNITED STATES DISTRICT COURT
DISTRICT OF MAINE
MARICAL INC.,
EUROPHARMA AS, and
EUROPHARMA INC (CANADA),
Plaintiffs,
Civil No. 1:14-cv-00366-JDL
v. Consent Confidentiality Order
COOKE AQUACULTURE INC.,
COOKE AQUACULTURE USA INC.,
TRUE NORTH SALMON CO. LTD.,
TRUE NORTH SALMON US INC.,
TRUE NORTH SALES US INC., and
SALMONES CUPQUELAN S.A.,
Defendants.
The parties to this Consent Confidentiality Order have agreed to the terms of this Order; accordingly, it is ORDERED:
1. Scope. All documents, or portions thereof, including electronically stored information, produced in the course of discovery, including initial disclosures, all responses to discovery requests, all deposition testimony and exhibits, and any form of discovery contemplated under Rules 26 through 36 of the Federal Rules of Civil Procedure, other materials which may be subject to restrictions on disclosure for good cause and information derived therefrom (hereinafter collectively "documents"), shall be subject to this Order concerning confidential information as set forth below. This Order is subject to the Local Rules of this District and of the Federal Rules of Civil Procedure on matters of procedure and calculation of time periods.
2. Form and Timing of Designation. A party may designate documents as confidential and restricted in disclosure under this Order by placing or affixing the words "CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER" ("Confidential") or "HIGHLY CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER" ("Highly Confidential") or a suitable equivalent designation, on the document in a manner that will not interfere with the legibility of the document and that will permit complete removal of the confidentiality designation. Documents shall be designated as Confidential or Highly Confidential prior to or at the time of the production or disclosure of the documents and may be re-designated at any time after production. Any designation of a document or thing as Confidential or Highly Confidential does not mean that the document has any status or protection by statute or otherwise except to the extent and for the purposes of this Order.
(a) In lieu of placing or affixing the words "CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER" or "HIGHLY CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER" to an original document, such documents may be orally designated as confidential documents being produced for inspection, thereby making them subject to this Order. Copies of such documents thereafter provided shall be marked with the appropriate confidentiality designation at the time copies are provided to the party requesting their production. By producing documents for inspection in lieu of providing copies, a party does not waive in whole or in part any confidentiality or any right to withhold production of any privileged or work product document (or portion thereof) inadvertently produced for inspection.
(b) Tangible objects may be designated as Confidential or Highly Confidential by affixing to the object or its container a label or tag indicating the category of confidentiality.
3. Documents Which May be Designated CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER or HIGHLY CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER. Any party may designate documents as CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER or HIGHLY CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER but only after review of the documents by an attorney1 who has in good faith determined that the documents contain information protected from disclosure by statute or that should be protected from disclosure. "Highly Confidential" information includes, without limitation, any documents and things relating to strategic plans, marketing and financial information concerning a party's current products, processes and/or business relationships or potential future products, processes and/or business relationships. It is understood that the "Highly Confidential" designation is an exceptional designation to be used in good faith only to protect the party's documents and things and that meet the above defined criteria. "Confidential Information", which includes all Highly Confidential information as well as includes, without limitation, confidential personal information, trade secrets, personnel records, research and development, or commercial information. Any designation as Confidential or Highly Confidential shall be made subject to the standards of Rule 11 and the sanctions of Rule 37 of the Federal Rules of Civil Procedure. Information or documents that are available in the public sector may not be designated as Confidential or Highly Confidential.
4. Depositions. Deposition testimony shall be deemed Confidential or Highly Confidential information only if designated as such. Such designation shall be specific as to the portions to be designated. Depositions, in whole or in part, shall be designated on the record as Confidential or Highly Confidential information at the time of the deposition. Deposition testimony so designated shall remain Confidential or Highly Confidential until thirty days after delivery of the transcript by the court reporter. Within thirty days after delivery of the transcript, a designating party may serve a Notice of Designation to all parties of record as to specific portions of the transcript to be designated Confidential or Highly Confidential. Thereafter, those portions so designated shall be protected as Confidential or Highly Confidential pending objection under the terms of this Order. The failure to serve a Notice of Designation shall waive the Confidential or Highly Confidential designation made on the record of the deposition. If deposition excerpts have not been designated as Confidential or Highly Confidential pursuant to this order, they are not to be treated as sealed documents when filed with the court.
5. Protection of Confidential or Highly Confidential Material.
(a) General Protections. Documents designated Confidential or Highly Confidential under this Order shall not be used or disclosed by the parties, counsel for the parties or any other persons identified in ¶¶ 5(b) for any purpose whatsoever other than to prepare for and to conduct discovery and trial in this action, including any appeal thereof.
(b) Limited Third-Party Disclosures. The parties and counsel for the parties shall not disclose or permit the disclosure of any Confidential or Highly Confidential information to any third person or entity except as set forth in subsections (i) and (ii) below.
(i) Material marked, labeled or otherwise designated "Confidential", and access thereto and use or disclosure thereof, shall be limited to the following persons:
(1) Counsel. Outside counsel for the parties and employees of outside counsel who have responsibility for the preparation and trial of the action;
(2) Court Reporters and Recorders. Court reporters, videographers, and interpreters taking testimony for depositions;
(3) Contractors. Those persons specifically engaged for the limited purpose of making copies of documents or organizing or processing documents, providing graphic or design services, computer services, translators, and others performing services in conjunction with this litigation and whose responsibilities in connection with this action require access to such Confidential information.
(4) Consultants and Experts. Consultants, investigators, or experts (hereinafter referred to collectively as "experts") and their staff employed by the parties or counsel for the parties to assist in the preparation and trial of this action but only after such persons have completed the certification contained in Attachment A, Acknowledgment of Understanding and Agreement to Be Bound. Counsel who retained the expert or consultant shall forward a copy of the executed Attachment A, Acknowledgment of Understanding and Agreement to Be Bound to counsel for the other party at least five (5) business days (unless extended by agreement) prior to the proposed disclosure of Confidential information to such expert or consultant, excluding weekends and legal holidays, along with a copy of that expert's or consultant's resume or curriculum vitae. If any party objects in writing to the proposed disclosure within five (5) business days (unless extended by agreement) after receipt of the declaration and resume or curriculum vitae, the disclosure may not be made without prior approval by the Court or an express written agreement between the parties removing the objection. The burden shall be on the objecting party to show the Court why the disclosure should not be made. If counsel for the party producing Confidential information fails to object to such disclosure within the prescribed period, any objection to such disclosure shall be deemed waived, except as to a basis for objection that was not known and could not reasonably have been discovered within said five-day period.
(5) Others by Consent. Other persons only by written consent of the producing party or upon order of the Court and on such conditions as may be agreed or ordered. All such persons shall execute the certification contained in Attachment A, Acknowledgment of Understanding and Agreement to Be Bound.
(6) Authors and/or Recipients. Persons indicated on the face of the document or thing designated Confidential as an author or recipient of the document or thing.
(7) In-house Personnel. The parties shall exchange the name(s) of up to three (3) designated in-house personnel per party group (Plaintiffs and Defendants) who may receive Confidential information. As a condition precedent to the disclosure of Confidential information to the designated personnel, each person so designated must: acknowledge receipt and understanding of this Order; agree to be bound thereby; agree to use the Confidential information solely for this litigation and not to disclose any Confidential information to any other person, firm, or concern in violation of this Order, never to use any Confidential information, directly or indirectly, in competition with the party producing such information, nor to allow any other person to do so; and execute Attachment A, Acknowledgment of Understanding and Agreement to Be Bound, in the form annexed hereto. Outside counsel shall forward a copy of the executed Attachment — A to counsel for the party producing the Confidential information at least five (5) business days (unless extended by agreement) prior to the disclosure to such person(s), excluding weekends and legal holidays.
Plaintiffs and Defendants shall each have the right to add new persons or substitute new persons for existing designated personnel, provided that: (i) at any time no more than three designated personnel for each party shall have access to Confidential information pursuant to this Order; (ii) such new persons acknowledge receipt and understanding of this Order; agree to be bound thereby; agree to use the Confidential information solely for this litigation and not to disclose any Confidential information to any other person, firm, or concern in violation of this Order, never to use any Confidential information, directly or indirectly, in competition with the party producing such information, nor to allow any other person to do so; and execute Attachment A, acknowledging the foregoing, a copy of which will be forwarded to opposing counsel at least five (5) business days prior to the disclosure of Confidential information to such persons. If a party objects in writing to a proposed designated person within five (5) business days after receipt of the notice of it, the disclosure may not be made without prior approval by the Court or an express written agreement between the parties removing the objection. The burden shall be on the objecting party to show the Court why the disclosure should not be made.
(8) Witness at Deposition. A witness at a deposition that is currently employed by any party may be shown any document that contains or reveals Confidential Information, provided that at the time of such testimony the witness is an authorized recipient under Section 3, 4, 6 or 7 above, as the case may be; the Confidential information is redacted; the party that produced the document consents to such disclosure; or the witness is a current officer, director, or agent authorized to speak on behalf of the party producing the document. Any person who is not qualified to receive a Confidential document, as the case may be, may not attend a deposition at which such document may be disclosed.
(9) The Court and the Court's staff
(10) Any person to the extent required by Court Order
(ii) Material marked, labeled or otherwise designated "Highly Confidential", and access thereto and use or disclosure thereof, shall be limited to the following persons:
(1) Counsel. Outside counsel for the parties and employees of outside counsel who have responsibility for the preparation and trial of the action;
(2) Court Reporters and Recorders. Court reporters, videographers, and interpreters taking testimony for depositions;
(3) Contractors. Those persons specifically engaged for the limited purpose of making copies of documents or organizing or processing documents, providing graphic or design services, computer services, translators, and others performing services in conjunction with this litigation and whose responsibilities in connection with this action require access to such Highly Confidential information.
(4) Consultants and Experts. Consultants, investigators, or experts (hereinafter referred to collectively as "experts") and their staff employed by the parties or counsel for the parties to assist in the preparation and trial of this action but only after such persons have completed the certification contained in Attachment A, Acknowledgment of Understanding and Agreement to Be Bound. Counsel who retained the expert or consultant shall forward a copy of the executed Attachment A, Acknowledgment of Understanding and Agreement to Be Bound to counsel for the other party at least five (5) business days (unless extended by agreement)prior to the proposed disclosure of Highly Confidential information to such expert or consultant, excluding weekends and legal holidays, along with a copy of that expert's or consultant's resume or curriculum vitae. If any party objects in writing to the proposed disclosure within five (5) business days (unless extended by agreement) after receipt of the declaration and resume or curriculum vitae, the disclosure may not be made without prior approval by the Court or an express written agreement between the parties removing the objection. The burden shall be on the objecting party to show the Court why the disclosure should not be made. If counsel for the party producing Highly Confidential information fails to object to such disclosure within the prescribed period, any objection to such disclosure shall be deemed waived, except as to a basis for objection that was not known and could not reasonably have been discovered within said fiveday period.
(5) Others by Consent. Other persons only by written consent of the producing party or upon order of the Court and on such conditions as may be agreed or ordered. All such persons shall execute the certification contained in Attachment A, Acknowledgment of Understanding and Agreement to Be Bound.
(6) Authors and/or Recipients. Persons indicated on the face of the document or thing designated Highly Confidential as an author or recipient of the document or thing.
(7) Witness at Deposition. A witness at a deposition that is currently employed by any party may be shown any document that contains or reveals Highly Confidential Information, provided that at the time of such testimony the witness is an authorized recipient under Section 3, 4, or 6 above, as the case may be; the Highly Confidential information is redacted; the party that produced the document consents to such disclosure; or the witness is a current officer, director, or agent authorized to speak on behalf of the party producing the document. Any person who is not qualified to receive a Highly Confidential document, as the case may be, may not attend a deposition at which such document may be disclosed.
(8) The Court and the Court's staff
(9) Any person to the extent required by Court Order
(c) Control of Documents. Counsel for the parties shall make reasonable efforts to prevent unauthorized disclosure of documents designated as Confidential or Highly Confidential pursuant to the terms of this Order. Counsel shall maintain the originals of the forms signed by persons acknowledging their obligations under this Order for a period of six years from the date of signing.
(d) Copies. Prior to production to another party, all copies, electronic images, duplicates, extracts, summaries or descriptions (hereinafter referred to collectively as "copies") of documents designated as Confidential or Highly Confidential under this Order, or any individual portion of such a document, shall be affixed with the designation "CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER" or "HIGHLY CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER", or a suitable equivalent designation, if the designation does not already appear on the copy. All such copies shall thereafter be entitled to the protection of this Order. The term "copies" shall not include indices, electronic databases or lists of documents provided these indices, electronic databases or lists do not contain substantial portions or images of the text of confidential documents or otherwise disclose the substance of the confidential information contained in those documents.
6. Filing of CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER or HIGHLY CONFIDENTIAL — SUBJECT TO PROTECTIVE ORDER Documents. Before any document marked as Confidential or Highly Confidential is filed with the Clerk the party filing the document shall make reasonable efforts to ensure that the document is protected from public disclosure or has been redacted to remove nonessential Confidential or Highly Confidential information. The filing party shall first consult with the party which originally designated the document as Confidential or Highly Confidential to determine whether, with the consent of that party, a redacted document may be filed with the Court not under seal. Where agreement is not possible or adequate, a confidential document may be electronically filed under seal only in accordance with Local Rule 7A. Other than motions to seal and memoranda governed by Local Rule 7A, if the confidential contents of Confidential or Highly Confidential document are incorporated into memoranda or other pleadings filed with the court, counsel shall prepare two versions of the pleadings, a public and a confidential version. The public version shall contain a redaction of the contents of Confidential or Highly Confidential documents and shall be filed with the Clerk. The confidential version shall be a full and complete version of the pleading, including any exhibits which the party maintains should be under seal and shall be filed with the Clerk attached to a motion to seal filed in accordance with Local Rule 7A. The public version shall plainly indicate the exhibits (both by number and description of the exhibit) that have been filed under seal with the confidential version. In the event the confidential exhibit must be filed under seal because the parties cannot reach agreement on redaction, the filing party, if not the party seeking to maintain confidentiality status, shall describe the document and give it an Exhibit Number, indicating that it will be filed separately under seal by the opposing party. The party seeking to maintain confidential status shall file a motion to seal in accordance with Local Rule 7A within 3 business days of the filing of the opposing party's pleading. Failure to file a timely motion to seal could result in the pleading/exhibit being unsealed by the court without further notice or hearing.
7. No Greater Protection of Specific Documents. No party may withhold information from discovery on the ground that it requires protection greater than that afforded by this Order unless the party moves for an order providing such special protection.
8. Challenges by a Party to Designation as Confidential or Highly Confidential. Any Confidential or Highly Confidential designation is subject to challenge by any party or non-party (hereafter "party"). The following procedure shall apply to any such challenge.
(a) Objection to Confidentiality. At any time after the receipt of any document designated Confidential or Highly Confidential or of the refusal to produce a document on the ground of such designation, a party may serve upon the designating party an objection to the designation. The objection shall specify the documents to which the objection is directed and shall set forth the reasons for the objection as to each document or category of documents. Confidential or Highly Confidential documents to which an objection has been made shall remain Confidential or Highly Confidential until designated otherwise by waiver, agreement or order of the Court.
(b) Obligation to Meet and Confer. The objecting party and the party which designated the documents to which objection has been made shall have ten (10) days (unless extended by agreement) from service of the objection to meet and confer in a good faith effort to resolve the objection by agreement. If agreement is reached confirming or waiving the Confidential or Highly Confidential designation as to any documents subject to the objection, the designating party shall serve on all parties a notice specifying the documents and the nature of the agreement.
(c) Obligation to File Motion. If the parties cannot reach agreement as to any documents designated Confidential or Highly Confidential, for the purpose of discovery, the objecting party may file a motion to overrule the Confidential or Highly Confidential designation. The designating party has the burden to show good cause for the Confidential or Highly Confidential designation. The fact that the parties have agreed that the document will remain confidential for all purposes other than use in court does not mean that the item will necessarily be ordered sealed by the Court, even in the absence of objection by the opposing party.
9. Action by the Court. Applications to the Court for an order relating to documents designated Confidential or Highly Confidential shall be by motion under Local Rule 7. Nothing in this Order or any action or agreement of a party under this Order limits the Court's power to make orders concerning the disclosure of documents produced in discovery or at trial.
10. Use of Confidential Documents or Information at Trial. A party which intends to present or which anticipates that another party may present at trial Confidential or Highly Confidential documents or information derived therefrom shall identify the issue, not the information, in the pretrial memorandum. The Court may thereafter make such orders as are necessary to govern the use of such documents or information at trial.
11. Obligations on Conclusion of Litigation.
(a) Order Remains in Effect. Unless otherwise agreed or ordered, this Order shall remain in force after dismissal or entry of final judgment not subject to further appeal.
(b) Return of Confidential or Highly Confidential Documents. Within sixty (60) days (unless extended by agreement) after dismissal or entry of final judgment not subject to further appeal, all documents treated as Confidential or Highly Confidential under this Order, including copies as defined in ¶ 6(d), shall be returned to the producing party unless: (1) the document has been offered into evidence or filed without restriction as to disclosure; (2) the parties agree to destruction in lieu of return; or (3) as to documents bearing the notations, summations, or other mental impressions of the receiving party, that party elects to destroy the documents and certifies to the producing party that it has done so. Notwithstanding the above requirements to return or destroy documents, counsel may retain attorney work product, including an index which refers or relates to information designated Confidential or Highly Confidential, so long as that work product does not duplicate verbatim substantial portions of the text or images of confidential documents. Counsel may retain a copy of briefs and other court filings. This work product shall continue to be Confidential or Highly Confidential under this Order. An attorney may use his or her work product in a subsequent litigation provided that its use does not disclose or use Confidential or Highly Confidential documents.
(c) Deletion of Documents Filed under Seal from ECF System. Filings under seal shall be deleted from the ECF system only upon order of the Court.
12. Order Subject to Modification. This Order shall be subject to modification by the Court on its own motion or on motion of a party or any other person with standing concerning the subject matter. Motions to modify this Order shall be served and filed under Local Rule 7.
13. No Prior Judicial Determination. This Order is entered based on the representations and agreements of the parties and for the purpose of facilitating discovery. Nothing herein shall be construed or presented as a judicial determination that any documents or information designated Confidential or Highly Confidential by counsel or the parties is subject to protection under Rule 26(c) of the Federal Rules of Civil Procedure or otherwise until such time as the Court may rule on a specific document or issue.
14. Persons Bound. This Order shall take effect when entered and shall be binding upon all counsel and their law firms, the parties, and persons made subject to this Order by its terms.
15. Inadvertent Disclosure. The inadvertent or unintentional failure to designate specific documents or things as Confidential or Highly Confidential shall not be deemed a waiver in whole or in part of a party's claim of confidentiality as to such documents or things. Upon notice of the failure to designate, the party receiving such document or thing shall treat the document or thing as Confidential or Highly Confidential unless this Court provides otherwise. Upon receipt of such notice and properly designated documents or information, if applicable, the party who received undesignated documents or things shall return or destroy the improperly designated documents or information, and confirm such return or destruction in writing to the party that produced it, substitute the properly designated document or information for that previously received, and treat the document or information as Confidential or Highly Confidential.
(a) In the event of any accidental or inadvertent disclosure of information that is Confidential or Highly Confidential, counsel for the party responsible for the disclosure shall: (a) use objectively reasonable efforts to obtain the prompt return of any such information from the unauthorized recipient(s); (b) immediately inform the unauthorized recipient(s) of the provisions of this Order; (c) immediately notify opposing counsel of all of the pertinent facts, including the identity of the recipient(s); and (d) exercise commercially reasonable efforts to secure the agreement of the unauthorized recipient(s) not to further disseminate the Confidential or Highly Confidential information in any form. Compliance with the foregoing shall not prevent either party from seeking additional relief from the Court.
16. No Waiver of Privilege. If information subject to a claim of attorneyclient privilege, attorney work product immunity or any other applicable privilege or immunity protecting information from discovery is claimed to be inadvertently produced or disclosed, such production or disclosure shall in no way prejudice or otherwise constitute a waiver of or estoppel as to any claim of privilege, work product or other ground for withholding production to which the party producing or other person otherwise would be entitled, provided that the party producing promptly notifies the party receiving in writing of such inadvertent production or disclosure after the party producing discovers such inadvertent production or disclosure. Within five (5) days of receiving such notice, the receiving party shall return (or certify as to the destruction and non-retentions thereof) to the producing party the original and all copies of such documents and things identified by the producing party as being privileged or work product, and as having been inadvertently produced.
If the receiving party disputes that any such document was inadvertently produced, or is protected by the attorney-client privilege or by work product immunity, the receiving party may move the Court for an Order compelling production of such information, but the motion shall not assert as a ground for production the fact or circumstances of the inadvertent production.
17. Nonparty Production. The terms of this Order shall be applicable to any nonparty who produces information in connection with this action which is designated by such nonparty or a party hereto as Confidential or Highly Confidential. Any party seeking discovery of a nonparty shall provide to the nonparty with its discovery request(s) a copy of this Order.
So Ordered.
WE SO MOVE and agree to abide WE SO MOVE/CONSENT and agree to
by the terms of this Order abide by the terms of this Order
_______________________________ _______________________________
PERKINS THOMPSON, P.A. EATON PEABODY
David B. McConnell Seth W. Brewster (Bar No. 3741)
P.O. Box 426 One Portland Square
Portland, Maine 04112-0426 P.O. Box 15235
(207) 774-2635 Portland, ME 04112
dmcconnell@perkinsthompson.com (207) 274-5266
sbrewster@eatonpeabody.com
OF COUNSEL:
OF COUNSEL:
HAMILTON BROOK SMITH & REYNOLDS
Brian T. Moriarty FITZPATRICK, CELLA, HARPER & SCINTO
155 Seaport Boulevard Joshua I. Rothman
Seaport West 1290 Avenue of the Americas
Boston, Massachusetts 02210 New York, New York 10104-3800
(617) 607-5900 (212) 218-2100
Brian.Moriarty@hbsr.com jrothman@fchs.com
John L. DuPré Attorneys for Defendants
530 Virginia Road Cooke Aquaculture Inc. et al.
Concord, Massachusetts 01742
(978) 341-0036
John.Dupre@hbsr.com
Attorneys for Plaintiffs
MariCal, Inc. et al.
Signature: Signature:
/s/David B. McConnell /s/Seth W. Brewster
Printed Name: Printed Name:
David B. McConnell Seth W. Brewster
Dated: July 2, 2015 Dated: July 2, 2015
ATTACHMENT A
UNITED STATES DISTRICT COURT
DISTRICT OF MAINE
MARICAL INC.,
EUROPHARMA AS, and
EUROPHARMA INC (CANADA),
Plaintiffs,
Civil No. 1:14-cv-00366-JDL
v. Consent Confidentiality Order
COOKE AQUACULTURE INC.,
COOKE AQUACULTURE USA INC.,
TRUE NORTH SALMON CO. LTD.,
TRUE NORTH SALMON US INC.,
TRUE NORTH SALES US INC., and
SALMONES CUPQUELAN S.A.,
Defendants.
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND
The undersigned hereby acknowledges that he/she has read the Confidentiality Order dated ____________________________ in the above-captioned action and attached hereto, understands the terms thereof, and agrees to be bound by its terms. The undersigned submits to the jurisdiction of the United States District Court for the District of Maine in matters relating to the Confidentiality Order and understands that the terms of the Confidentiality Order obligate him/her to use documents designated Confidential or Highly Confidential in accordance with the Order solely for the purposes of the above-captioned action, and not to disclose any such documents or information derived directly therefrom to any other person, firm or concern.
The undersigned acknowledges that violation of the Confidentiality Order may result in penalties for contempt of court.
Name: ______________________________________
Job Title: ______________________________________
Employer: ______________________________________
Business Address: ___________________________
___________________________
___________________________
Date: _________________ ___________________________
Signature
