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
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
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
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
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
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 ...