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CUMMINS-ALLISON CORP. v. GLORY LTD.

December 31, 2003.

CUMMINS-ALLISON CORP., an Indiana Corporation, Plaintiff;
v.
GLORY LTD., a Japanese Corporation, GLORY SHOJI CO., LTD., a Japanese Corporation; and GLORY (U.S.A.) INC., a California Corporation, Defendants



The opinion of the court was delivered by: SIDNEY SCHENKIER, Magistrate Judge

MEMORANDUM OPINION AND ORDER

In this opinion, we address an issue that was raised early in the litigation but, until recently, has lain dormant: the right of the plaintiff, Cummins, to show certain documents produced in this litigation by the defendants (collectively referred to as "Glory"), to Stephen G. Rudisill and Paul R. Kitch, attorneys who are both counsel of record for Cummins in this lawsuit and counsel who prosecute patent applications for Cummins.

Glory has filed a motion to modify the stipulated protective order entered October 10, 2002 (doc.# 129). In its motion, Cummins seeks to do the following: (a) add a new provision (paragraph 3(c)) creating a class of documents entitled "Confidential — Patent Prosecution Information," which would consist of information that is "Highly Confidential" as defined by the protective order, and that additionally relates to "non-public patent applications and related communications or design or to research and development activities concerning current or future products"; (b) add a new provision (paragraph 9(b)) prohibiting Messrs. Rudisill and Kitch from receiving Glory's "Confidential — Patent Prosecution Information"; (c) in the alternative, provide in proposed paragraph 9(b) that if Messrs. Rudisill or Kitch receive such documents, they would be barred from participating in the prosecution of any patent applications "relating to the subject matter of the patents — in — suit during the pendency of this suit and for a period of one year after the conclusion of this litigation, including appeals"; and (d) make other, related changes to paragraphs 11, 12 and 25 of the protective order.

  Cummins does not object to the proposed new classification of "Confidential — Patent Prosecution Information," but objects to barring Messrs. Rudisill and Kitch from receiving them. Cummins further objects to any limitations on the ability of Messrs. Rudisill or Kitch to prosecute patent applications if they receive "Confidential — Patent Prosecution Information"; in the alternative, Cummins argues that if limitations are imposed, they should differ from those suggested by Glory. Finally, Cummins disagrees with the changes to paragraphs 11, 12 and 25 of the protective order proposed by Glory.

  For the reasons set forth below, the Court rules as follows:
A. The Court GRANTS Glory's unopposed request to modify the protective order to add paragraph 3(c), creating a category of documents entitled "Confidential — Patent Prosecution Information."
B. The Court DENIES Glory's request to bar Messrs. Rudisill and Kitch from receiving Confidential — Patent Prosecution Information. The Court GRANTS Glory's alternative request to modify the protective order to add paragraph 9(b), and adopts the version proposed by Glory.
C. The Court GRANTS Glory's request to modify paragraphs 11 and 12 of the protective order, and adopts the versions proposed by Glory.
D. The Court GRANTS Glory's request to modify paragraph 25 of the protective order, and adopts the version proposed by Cummins.
E. The Court sua sponte modifies paragraph 16 of the protective to make clear that it applies to Confidential — Patent Prosecution Information. I.
  We begin with a brief review of the background facts relevant to this motion. Cummins and Glory are competitors with respect to the sale of currency discriminators (which are machines that determine the authenticity and denomination of a stack of currency, and tabulate its value). Since early 1990, Cummins has prosecuted numerous patent applications relating to currency discriminators.*fn1

  On October 1, 2002, Cummins brought this suit alleging that Glory had infringed United States Patent No. 6, 459, 806 ("the `806 patent"), issued to Cummins on October 1, 2002. Since that time, Cummins has amended the complaint to add claims of infringement of United States Patent No. 5, 291, 196 ("the `196 patent"). Messrs. Rudisill and Kitch — along with several other attorneys of the law firm of Jenkins & Gilchrist — have been litigation counsel of record for Cummins from the beginning of this lawsuit. On October 11, 2002, Jeffrey Knoll, of the law firm of Wood, Phillips, Van Santen, Hoffman & Ertel (now known as Wood, Phillips, Kutz, Clark & Mortimer), filed an appearance for Cummins (doc, # 11). In April 2003, three attorneys from the law firm of Winston & Strawn filed additional appearances as counsel of record for Cummins (doc. ## 98-99).

  In addition to being counsel of record, Messrs. Rudisill and Kitch have been extensively involved in prosecuting Cummin's patent applications in the Patent and Trademark Office ("PTO"), including the applications which led to the `806 and `196 patents, which are directly at issue in this litigation(see Cummins Mem. at 3). Messrs. Rudisill and Kitch also have been involved in prosecuting eight other Cummins patent applications that are related to the `806 and `196, including one patent that was the subject of prior litigation in this district between the parties (the `067 patent) and three patents at issue in a lawsuit currently pending in the Eastern District of Texas (the `067 patent, United States Patent No. 5, 815, 592, and United States Patent No. 6, 381, 354 (Glory Mot. at 3 n.5 and Ex. 1).

  Messrs. Rudisill and Kitch have submitted unrebutted declarations stating that they are strictly outside patent counsel for Cummins: neither of them is — or ever has been — a shareholder, officer or employee of Cummins (Cummins Mem., Ex. A, ¶ 3; Ex. B, ¶ 3). It also is undisputed that neither Mr. Rudisill or Mr. Kitch is involved in Cummin's product design, marketing, pricing, or in "planning decisions" (Id., Ex. A, ¶ 4; Ex. B, ¶ 4), and that neither has ever been cited for any ethical violation, or for violation of a protective order (Id., Ex. A, ¶ 5; Ex. B, ¶ 5). However, Messrs. Rudisill and Kitch are silent on their roles in advising Cummins on the strategy of what to claim in a patent application, or how to respond when the PTO (as was often the case with the patents in suit and the applications that led to them) raised questions or rejected claim. Cummins does not assert that Messrs. Rudisill and Kitch are merely conduits through which Cummins transmits applications that have been fully formed by Cummins, without their input.

  Messrs. Rudisill and Kitch state that they have been principal patent counsel in this litigation, and in that capacity, have devoted substantial time to familiarizing themselves with the patents at issue (which should not have been a time consuming task, since Messrs. Rudisill and Kitch prosecuted the applications that led to those patents) and with Glory's equipment and related technology (Cummins Mem., Ex. A, ¶ 6; Ex. B, ¶ 6). They do not claim to be the only attorneys representing Cummins who have done so, or to be the only attorneys of record for Cummins who are experienced patent attorneys.*fn2 Cummins also states that it has not yet shared with "patent prosecutors. . . . selected confidential documents" identified by Glory (Cummins Mem. at 2) — thereby indicating that neither Mr. Rudisill nor Mr. Kitch has yet invested time in reviewing and analyzing materials that Glory seeks to protect as "Confidential — Patent Prosecution Information."*fn3

  II.

  As the party seeking to modify the protective order, Glory has the burden of showing good cause for its requested modifications. SmithKline Beecham Corp. v. Synthon Pharmaceuticals Ltd, 210 F.R.D. 163, 166 (M.D.N.C. 2002); Jochims v. Isuzu Motors, Ltd., 145 F.R.D. 499, 501-502 (S.D. Iowa 1992) (citing cases). As explained above, Cummins does not dispute the existence of good cause to modify the protective order to add paragraph 3(c), which creates a new class of Confidential — Patent Prosecution Information.

  However, Cummins raises several challenges to Glory's request to bar Messrs. Rudisill and Kitch from viewing Confidential — Patent Prosecution Information. First, Cummins argues that the Court should not even address the merits of Glory's request because the request is untimely (Cummins Mem. at 2-3). Second, Cummins argues that Glory has failed to establish good cause to place any conditions, other than those already in the protective order governing Confidential and Highly Confidential Information, on the right of Messrs. Rudisill and Kitch to receive that information (Id. at 4-11). Third, Cummins argues that if any conditions are placed on the right of Messrs. Rudisill and Kitch to receive Confidential — Patent Prosecution Information, the conditions that Glory requests are too broad (Id. at 12-14). We address each of these arguments below.

  III.

  We begin the analysis with consideration of Cummins's argument that the Court need not address Glory's request to modify the protective order. Cummins argues that the protective order in this case was negotiated by the parties and entered by the Court (with modifications irrelevant to the pending motion) on October 11, 2002, without Glory seeking to include the provisions concerning Confidential — Patent Prosecution Information or access to it that Glory now requests. Cummins argues that at the time the protective order was entered more than one year ago, Glory knew that Messrs. Rudisill ...


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