United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
R. HARJANI UNITED STATES MAGISTRATE JUDGE
SPS Technologies, LLC d/b/a PB Fasteners (“PB
Fasteners”) moves to enforce a subpoena directed to The
Boeing Company, a non-party in a trade secrets case being
litigated in the United States District Court for the Central
District of California. After PB Fasteners' motion was
fully briefed, the Court heard oral argument on May 28, 2019.
For the reasons explained below, Petitioner's Motion to
Enforce Subpoena for the Production of Documents Issued to
The Boeing Company  is granted in part and denied in part.
The Boeing Company shall comply with this Opinion by June 18,
2019. A status hearing is set for June 20, 2019 at 9:15 a.m.
Fasteners is a designer and manufacturer of high-strength
aerospace fasteners “with more than fifty years of
experience in the industry.” (Doc. 1-1 at 71, First Am.
Cmplt. ¶ 1). PB Fasteners' website says that it
“is best known for [its] developed Taper-Lok® and
SLEEVbolt® fastening systems, which are used to enhance
structural performance and manage electromagnetic effects in
composite and multi-metal structure.”
PB Fasteners alleges that its “tapered bolt and sleeve
are made and assembled with confidential and proprietary
specifications, dimensions, and processes, which are
essential to the proper manufacture and functioning of the
SLEEVbolt®” and were developed through many years
of research and testing. (First Am. Cmplt. ¶¶ 5,
6). PB Fasteners claims that these “specifications,
dimensions, and processes are not generally known or readily
ascertainable.” Id. ¶ 6. PB Fasteners
also alleges that it has made extensive efforts to maintain
the secrecy of its SLEEVbolt® information. Id.
primary consumer of the SLEEVbolt® system is The Boeing
Company, which has been a customer of PB Fasteners for more
than forty years. (First Am. Cmplt. ¶ 7). Boeing and PB
Fasteners have a contract for the production of
SLEEVbolts® for use in Boeing's composite 787
aircraft as well as short-term purchase orders for the
production of SLEEVbolts® for Boeing's composite 777X
aircraft. Id. The contract for the 787 aircraft
requires Boeing to purchase 90% of the SLEEVbolt®
requirements for its 787 aircraft from PB Fasteners through
December 31, 2021. Id. ¶¶ 7, 44. As part
of their contractual and ongoing business relationship, PB
Fasteners gave Boeing access to its propriety SLEEVbolt®
information, which Boeing needed to properly inspect and
approve the SLEEVbolts® and integrate them into its
aircraft assembly process. Id. ¶ 7. PB
Fasteners alleges that it “communicated all proprietary
information to Boeing with the explicit condition that the
information would remain confidential.” Id.
underlying case in the Central District of California arises
in part from the alleged trade secret misappropriation of PB
Fasteners' SLEEVbolt® system by Briles Aerospace,
Inc., Michael Briles, and Robert Briles (collectively the
“Briles Defendants”). PB Fasteners and Briles
Aerospace are competitors in the aerospace fastener market.
(First Am. Cmplt. ¶ 97). In May 2011, Michael Briles was
the Director of Sales and Marketing at PB Fasteners.
Id. ¶¶ 8, 59. Thereafter, after leaving PB
Fasteners, Michael Briles founded Briles Aerospace, Inc. in
May 2012. Id. ¶ 8. Briles Aerospace initially
provided standard products and services for the aerospace
industry. Id. Robert Briles is the uncle of Michael
Briles. Id. ¶ 18. Before May 2011, Robert
Briles was the President of PB Fasteners. Id.
¶¶ 18, 54.
Fasteners alleges that in 2016, Briles Aerospace
“launched a campaign to misappropriate the
SLEEVbolt® system and attempt to manufacture and sell
it.” (First Am. Cmplt. ¶ 18). As part of this
alleged campaign, Briles Aerospace recruited nine current and
former PB Fasteners employees with “detailed knowledge
of PB Fasteners' proprietary information.”
Id. ¶¶ 9, 71. PB Fasteners also alleges
that Michael Briles and Robert Briles shared PB
Fasteners' confidential and proprietary information with
Briles Aerospace. Id. ¶¶ 57, 67. In
addition, PB Fasteners claims that Briles Aerospace worked
with Boeing to obtain the necessary qualifications to produce
the SLEEVbolt® by gaining access to PB Fasteners'
proprietary information through documents, in-person
meetings, and telephone calls with Boeing representatives.
Id. ¶¶ 10, 78. PB Fasteners believes that
Briles Aerospace worked with and encouraged Boeing to issue a
new Request for Proposal (“RFP”) in September
2018 for a SLEEVbolt® with a minor machined
“notch” on the head of the tapered bolt.
Id. ¶¶ 11, 79-80. Briles Aerospace
provided a proposal in response to the RFP and began limited
SLEEVbolt® deliveries to Boeing in late 2018.
Id. ¶¶ 13, 93. PB Fasteners maintains that
the “shape of the head of the protruding bolt is
irrelevant to the actual functioning of the SLEEVbolt®
because it plays no role in the sleeve expansion” and
the “notched” SLEEVbolt® “is
essentially the same as the SLEEVbolt® that does not
contain the notch.” Id. ¶¶ 81, 82.
connection with the RFP, Boeing disclosed to PB Fasteners
that it had qualified another manufacturer, Lisi Aerospace
Canada, to provide tapered sleeve bolts. (First Am. Cmplt.
¶ 12). Litigation between PB Fasteners and Lisi
Aerospace is currently ongoing in Montreal Superior Court.
(Doc. 1, at 3 n.2). PB Fasteners claims that Boeing similarly
facilitated Lisi Aerospace's misappropriation of PB
Fasteners' trade secrets. PB Fasteners contends that
neither Briles Aerospace or Lisi Aerospace “could have
obtained the necessary qualifications without
misappropriating PB Fasteners' proprietary
information.” (First Am. Cmplt. ¶ 12).
November 9, 2018, PB Fasteners filed a complaint against
Briles Aerospace in the United States District Court for the
Central District of California. PB Fasteners later filed its
First Amended Complaint adding Michael Briles and Robert
Briles as defendants. PB Fasteners' First Amended
Complaint contains ten causes of action: violation of Defend
Trade Secrets Act, 18 U.S.C. §1836 et seq.
(First Cause of Action against Briles Aerospace); violation
of California Uniform Trade Secrets Act, Cal. Civ. Code
§ 3426 et seq. (Second Cause of Action against
Briles Aerospace); violation of Lanham Act, 15 U.S.C. §
1051 et seq. (Third Cause of Action against Briles
Aerospace); violation of California False Advertising Law,
Cal. Civ. Code § 17500 (Fourth Cause of Action against
Briles Aerospace); violation of California Unfair Competition
Law (false advertising), Cal. Civ. Code § 17200 (Fifth
Cause of Action against Briles Aerospace); intentional
interference with contractual relations (Sixth Cause of
Action against Briles Aerospace); violation of California
Unfair Competition Law (interference), Cal. Civ. Code §
17200 (Seventh Cause of Action Against Briles Aerospace);
intentional interference with prospective business relations
(Eighth Cause of Action against Briles Aerospace); breach of
contract (Ninth and Tenth Causes of Action against Michael
Briles and Robert Briles). (First Am. Cmplt. ¶¶
is not a party to the action in the Central District of
California. On March 7, 2019, PB Fasteners served Boeing with
a subpoena to produce documents in connection with the
underlying litigation. Boeing objected to the subpoena on
various grounds, including relevancy, burdensomeness, and
proportionality, on March 19, 2019. After negotiations, PB
Fasteners substantially narrowed the number of custodians and
date ranges it proposed to be searched. BP Fasteners and
Boeing agreed on seven Boeing custodians whose documents
would be searched, six of twelve search terms, and a date
range of January 1, 2016 through March 29, 2019. (Doc. 15 at
4; doc. 19 at 1). Boeing's proposal hit on approximately
20, 000 documents, while PB Fasteners' proposal hit on
approximately 40, 000 documents. (Doc. 15 at 4). Boeing
states that its proposal to review 20, 000 documents will
cost approximately $70, 000 and PB Fasteners' additional
search terms would impose nearly $70, 000 in extra costs on
Boeing. Id. at 9. Fact discovery closes on June 28,
2019 in the underlying lawsuit, and the case is set for trial
on October 11, 2019. Against this factual backdrop, the Court
considers PB Fasteners' motion to enforce its subpoena.
of the Federal Rules of Civil Procedure governs subpoenas
directed to non-parties. Rule 45(d)(2)(B)(i) provides that a
party serving a subpoena may move for an order compelling
production in “the court for the district where
compliance is required.” Fed.R.Civ.P. 45(d)(2)(B)(i).
As for relevance, “[t]he scope of material obtainable
by a Rule 45 subpoena is as broad as permitted under the
discovery rules.” Williams v. Blagojevich,
2008 WL 68680, at *3 (N.D. Ill. Jan. 2, 2008); see
also Advisory Committee Notes regarding 1991 Amendments
to Rule 45(a)(2) (stating a “non-party witness is
subject to the same scope of discovery under this rule as
that person would be as a party to whom a request is
addressed pursuant to Rule 34.”). Rule 26(b)(1) allows
“discovery regarding any nonprivileged matter that is
relevant to any party's claim or defense and proportional
to the needs of the case.” Fed.R.Civ.P. 26(b)(1). The
factors relevant to the proportionality inquiry are
“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.” Id.
issuing a subpoena must “take reasonable steps to avoid
imposing undue burden or expense on a person subject to the
subpoena.” Fed.R.Civ.P. 45(d)(1). Moreover,
“[w]hen a third-party is ordered to produce documents
pursuant to a subpoena, ‘the presumption is that the
responding party must bear the expense of complying with
discovery requests,' including requests for electronic
data.” United States v. Cardinal Growth, L.P.,
2015 WL 850230, at *2 (N.D. Ill. Feb. 23, 2015) (citation
omitted). However, an order requiring compliance “must
protect a person who is neither a party nor a party's
officer from significant expense resulting from
compliance.” Fed.R.Civ.P. 45(d)(2)(B)(ii).
outset, the Court notes that PB Fasteners' motion seeks
to enforce the subpoena in full, and in this respect, Boeing
requests denial of the motion. Boeing's Response also
clarifies, however, that it remains willing to review and
produce documents based on its proposed search terms. (Doc.
15 at 2). Thus far, Boeing has not produced any documents in
response to the subpoena. At oral argument, PB Fasteners
essentially limited its motion to the concessions it offered
during the meet and confer process by presenting and relying
upon a demonstrative exhibit summarizing the agreements and
disputed areas between PB Fasteners and ...