The Regents of the University of Michigan v. Leica Microsystems Inc.
- William Orrick
- 3:19-cv-07470
- U.S. District Court · Northern District of California
- 6
In The Regents of the University of Michigan v. Leica Microsystems Inc., Judge DeMarchi denied without prejudice competing protective-order requests over in-house counsel’s access to highly confidential discovery.
The Regents of the University of Michigan and Leica Microsystems Inc., particularly their in-house counsel and the handling of confidential discovery material.
What happened
The Regents of the University of Michigan v. Leica Microsystems Inc. involves the parties’ dispute over a protective order for exchanging information during a patent-infringement case. Most terms were agreed, but the parties disagreed about whether in-house counsel could see discovery labeled “Highly Confidential – Attorneys Eyes Only.”
The University of Michigan wanted the order to allow one designated in-house lawyer, Jason Garr, to access that material. Leica argued that in-house counsel should not have broad access and that Mr. Garr’s work advising the university’s technology-transfer office could create a risk that Leica’s information would be misused for competitive purposes.
The court said the record did not contain enough evidence about the kinds of information involved or Mr. Garr’s duties to resolve the dispute. Judge Virginia K. DeMarchi denied without prejudice both parties’ requests for their proposed protective orders, allowing them to submit more supporting material, continue negotiating, or file an agreed order.
The detailed version
- The Regents of the University of Michigan v. Leica Microsystems Inc. · No. 3:19-cv-07470
- William Orrick
- Apr. 10, 2020
Background
The Regents of the University of Michigan (UM) alleges that Leica Microsystems Inc. infringes a UM patent concerning fluorescence detection of tagged molecules in a sample. The parties asked the court to resolve disagreements about a proposed protective order governing disclosures and discovery in the case. They had agreed to most provisions based on a model protective order for patent cases.
The main dispute concerned optional section 7.3(b) of the model order. That provision would allow one designated in-house lawyer for a receiving party to see material marked “Highly Confidential – Attorneys Eyes Only” (HC/AEO), if the lawyer had no involvement in competitive decision-making, the disclosure was reasonably necessary for the litigation, the lawyer agreed to be bound by the order, and specified procedures were followed.
UM proposed Jason Garr, its Associate General Counsel, as the designated in-house lawyer. UM said Mr. Garr advises its Office of Technology Transfer on licensing and litigation, performs an exclusively legal role, does not provide business advice, is not involved in competitive decision-making, and did not participate in pre-suit discussions with Leica. Leica disputed whether Mr. Garr’s responsibilities created a risk of competitive misuse, noting that UM identified him as working in patent prosecution as well as licensing and litigation and that he could be a potential fact witness.
Court’s analysis
The court explained that Federal Rule of Civil Procedure 26(c) allows a court to protect parties from undue burden or expense in discovery, including by limiting disclosure of trade secrets or confidential commercial information. Discovery material is generally presumed to be public in the Ninth Circuit, and the party seeking protection ordinarily must show good cause.
The court said that decisions about whether in-house counsel may see an opposing party’s confidential discovery require a specific factual examination of both the material to be disclosed and the lawyer’s role and responsibilities. The court rejected a categorical rule either allowing or barring such access.
The court could not resolve the dispute on the record presented. The parties appeared uncertain about what types of information each might designate as HC/AEO, and they provided no evidence about Mr. Garr’s actual role and responsibilities. UM described his duties only generally, while Leica challenged that description using information from UM’s website.
The court also rejected UM’s argument that access should be allowed simply because UM is a university and does not design, make, or sell products. The court said the analysis is not limited to whether the parties are direct commercial competitors or whether counsel fits a narrow definition of “competitive decision-making.” It noted that the complaint suggested both parties had pursued patents in the fluorescence-detection field and that UM’s efforts to license inventions could create concerns about Mr. Garr’s handling of Leica’s confidential information.
Disposition
The court denied, without prejudice, the parties’ competing requests to enter their respective protective orders. The parties may resubmit the dispute with supporting material addressing the court’s concerns. They may also continue discussing categories of HC/AEO information that could be disclosed to in-house counsel or submit a stipulated proposed protective order if they reach agreement.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.