Nanobebe US Inc. v. Mayborn Limited

Background

The parties jointly requested a protective order under Federal Rule of Civil Procedure 26(c). That rule allows a court to protect parties or other persons from harm during discovery, including harm from disclosure of confidential information. The parties sought protection for nonpublic and competitively sensitive information that might be exchanged in this action. The parties agreed to the order through counsel, and the court found good cause for issuing a tailored confidentiality order for the pretrial phase.

Terms of the Order

The order covers discovery material designated either “Confidential” or “Highly Confidential – Attorneys’ Eyes Only.” A producing party may use the Confidential designation for specified nonpublic ownership, business, technical, personal, or other court-approved information. The more restrictive Highly Confidential designation may be used for specified nonpublic financial information, business or marketing plans, trade secrets, and other information that could cause competitive, commercial, or financial harm and would not be adequately protected under the ordinary Confidential procedures.

Confidential information may be disclosed only to specified recipients, including designated representatives, outside counsel and litigation-support personnel, vendors, mediators or arbitrators, certain people identified on a document, qualified experts or consultants, deposition stenographers, and the court. Representatives, mediators or arbitrators, and experts or consultants generally must receive the order and sign a nondisclosure agreement before receiving the material. The order also sets a notice-and-objection process for proposed experts and consultants.

Highly Confidential–Attorneys’ Eyes Only information may not be disclosed by anyone other than the producing party except to the categories of litigation personnel and others listed in the order; designated party representatives are excluded from that permission. The order requires protected court filings to include a public redacted version and an unredacted version filed under seal, along with a particularized justification for sealing. It also states that the court has not made a finding that any particular material is confidential and may later decide whether confidential treatment is appropriate.

The order allows objections to confidentiality designations and provides procedures for presenting unresolved disputes to the court. Protected material may be used only to prosecute or defend this action and related appeals. If privileged or work-product-protected information is accidentally disclosed, the disclosure does not waive the protection under the order. The receiving party must stop reviewing the material and generally return or destroy it within five business days after receiving notice, subject to the procedures for a privilege log and a possible motion to compel production.

Within 60 days after final disposition of the action, including appeals, recipients generally must return or 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 litigation materials, which remain subject to the order. The order survives the end of the litigation, and the court retains jurisdiction to enforce it or impose contempt sanctions.

Patent Prosecution Bar

The order bars an outside attorney, consultant, or expert who reviews or learns the other side’s Highly Confidential–Attorneys’ Eyes Only material from preparing, prosecuting, supervising, or assisting with certain patent applications involving drinking or feeding vessels with nipples, nipples, and nipple assemblies. The restriction applies during the action and for one year after its conclusion, including appeals. The order requires an ethical wall between people who review that material and people handling the covered patent applications. It states that the restriction does not bar participation in specified post-grant proceedings, except for claim drafting or claim amendments, and is personal to the individual who reviewed the material rather than automatically applying to others at that person’s law firm.

Ruling

Judge Gregory H. Woods ordered the parties and other persons covered by the order to comply with the stipulated confidentiality agreement and protective order. The order governed discovery and related confidentiality obligations; it did not resolve the underlying dispute, decide whether any particular material was confidential, waive objections or privileges, or determine whether evidence would be admissible at trial.