Novartis Pharma AG v. Incyte Corporation

Background

The parties jointly requested a protective order under Federal Rule of Civil Procedure 26(c). They sought protections for nonpublic, commercially sensitive, proprietary, financial, research and development, clinical-trial, pharmaceutical-development, business-planning, and other information that might be disclosed during discovery. The court found good cause for an appropriately tailored order covering the pretrial phase of the case.

Order

The court ordered the parties and other people with notice of the order to follow its terms, subject to contempt sanctions. The order establishes two categories of protected discovery material:

- Confidential: Material that the producing party reasonably and in good faith believes contains specified types of nonpublic or commercially sensitive information, including information covered by the parties’ November 24, 2009 Collaboration and License Agreement, previously undisclosed pharmaceutical-development information, financial information, and business or marketing plans. - Highly Confidential: Material that the producing party reasonably and in good faith believes is highly sensitive or proprietary and whose disclosure could cause competitive, commercial, or financial harm, or material that would not be adequately protected under the procedures for Confidential material. Counsel of record must review and have a good-faith basis for a Highly Confidential designation.

Copies, excerpts, summaries, notes, and similar materials containing protected information receive the same designation. Information that is public when disclosed, or later becomes public, is excluded from the order’s definition of protected material.

Disclosure limits

Confidential material may be disclosed to specified litigation-related recipients, including the parties and certain personnel assisting with the case, insurers, counsel and their staff, litigation vendors, mediators and arbitrators, certain document recipients, witnesses, experts, deposition stenographers, and the court. Some recipients must first sign the order’s nondisclosure agreement.

Highly Confidential material is subject to narrower disclosure limits. Permitted recipients include outside counsel, qualifying in-house counsel, certain litigation vendors, mediators and arbitrators, certain current or former personnel of the producing party serving as fact witnesses, experts and specialized advisers, deposition stenographers, and the court. The order generally requires qualifying recipients to sign the nondisclosure agreement before receiving the material.

Protected material may be used only to prosecute or defend this action and related appeals, not for another purpose or litigation. The order does not restrict a party’s rights concerning its own documents or information. It also does not waive objections to discovery, privilege, or other protections, and it does not decide whether evidence will be admissible at trial.

Court filings and challenges

A party filing protected material must publicly file a redacted version and file the unredacted version under seal when permitted by the court’s rules. A party seeking to file material under seal must provide a particularized justification. The order warns that the court is unlikely to seal material introduced into evidence at trial merely because it was previously designated as confidential.

A party may object in writing to a Confidential or Highly Confidential designation before trial. If the parties cannot resolve the dispute, they must present it to the court under the court’s individual practices. The designating party bears the burden of proving that the designation is appropriate.

Duration and disposition

Within 60 days after the final disposition of the action, including appeals, recipients generally must return or, with the producing party’s permission, destroy protected material and certify that they have not retained copies or other reproductions. Attorneys specifically retained for the action may keep archival copies of specified case materials, but those copies remain subject to the order. The order survives termination of the litigation, and the court retains jurisdiction to enforce it and impose contempt sanctions.

Disposition

Judge Gregory H. Woods entered the parties’ stipulated confidentiality agreement and protective order. The order governs discovery and does not resolve the underlying claims between the parties.