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LITIGATORS CORNER: years, was a safer bet for the defendant,
even though it could not see that. He was a
What’s Wrong With litigant, and thus under better control by the
court. He had not been employed by any of
the companies identified by the defendant.
Protective Orders? But the defendant’s goal wasn’t efficiency or
fairness; it was instead to use the protective
order to win the case. If you must agree to
PART 1 rubbish like this, at least preserve your
objection to it; sign it: “Approved as to form,
In one of our cases, the defendant, a but not substance.”
BY JOSEPH N. HOSTENY,
company in the scanner radio industry, Excessively restrictive protective orders
OF NIRO, SCAVONE,
sought to exclude our client from access to unfairly deny litigants the right to make
HALLER & NIRO
confidential information needed to prove meaningful decisions about their own cases.
Regular IP Today infringement. The defendant would only In a case we lost, everyone but the plaintiff
columnist Joseph permit access if our client agreed not to could see the testimony that led to a sum-
N. Hosteny is an consult for any company making ham or mary judgment of non-infringement. Why
intellectual property marine radios, which both receive and should a plaintiff be required to risk his
litigation attorney transmit. The subject of the suit, however, property while he is blindfolded? You might
with the Chicago law firm of Niro, Scavone, was scanner radios, which only receive. as well go to Las Vegas and throw dice at the
Haller & Niro. A Registered Professional The defendant sought protection broader craps table with a bag over your head.
Engineer and former Assistant US Attorney, than was necessary. As you can well imag- Many, too many, protective orders are
his articles have also appeared in Corporate ine, this broad protective order could have abusive in another way. They allow classifi-
Counsel Magazine, The Docket (American severely limited our client’s ability to find cation of information as confidential on the
Corporate Counsel Association), American any work at all. We asked for a list of com- whim of a party. In one of our cases, the
Medical News, Inventors’ Digest, Litigation petitors. The defendant came back with a defendant proposed a protective order that
Magazine and Assembly Engineering list of their purported competitors, includ- allowed materials to be made confidential if
Magazine. Listed in Who’s Who, Mr. ing one company that was out of business. they “might be of value to a party.” That is
Hosteny was recently named to the Board of Some competitor. Our client then offered meaningless. The better rule is to require
Editors of Patent Strategy & Management (a not to work for any of the defendant’s real good cause. In our circuit, Citizens First
monthly publication of American Lawyer competitors in the area of scanner radios. Nat’l Bank of Princeton v. Cincinnati Ins.
Media), for which he will also be writing After this, the defendant’s proposal became Co., 178 F.3d 943 (7th Cir. 1999) prohibits
periodic guest columns. Mr. Hosteny can be even more onerous: it said he had to agree what Judge Posner called a “seal whatever
reached at (312) 236-0733, or by e-mail at not to do any work of any kind for any of the you want” protective order, and cites any
jhosteny@hosteny.com, or by visiting his competitors. We had to move for entry of an number of cases from the Supreme Court
web site at http://www.hosteny.com. order that complied with 7th Circuit law. and elsewhere requiring good cause.
You get the drift. Our client could only Another protective order I saw was nine
see confidential information concerning the pages long, and refers to “confidential” or
P
rotective orders don’t protect. They
obscure, delay, prevent and frustrate. suit if he agreed never to work for anybody, “attorneys’ eyes only” information. But the
They increase expense. They are a tool in any capacity, concerning any kind of order forgets to describe what is confiden-
of abuse, not to mention a fine example of radio equipment. The proposal was unrea- tial; it simply says that anything that a
turgid, foggy legal prose. The modern pro- sonable. It was, in effect, a covenant not to party believes is confidential or proprietary
tective order is often a sword, or maybe a compete with an unspecified scope and an may be placed into either category. In other
rocket-propelled grenade, rather than a indefinite duration. You know what courts words, it is confidential because it is confi-
shield. The sooner our justice system real- think of those. They are unenforceable, dential. An order like that can be used to
izes it, the better off we will be. And, if dis- because such covenants are grossly unfair. prevent your client from seeing just about
trict judges ever catch on to the benefits of The effort to exclude the plaintiff was anything the other side doesn’t want him to
appropriately limited protective orders, it pointless for another reason, as well. The see.
may amaze them how many cases get set- technology was specialized. Our client was Make sure you have a requirement of
tled or go to private arbitration. an expert in scanner radios, and particularly “good cause” in any protective order you
The modern protective order is often a in how to make scanner radios scan faster. agree to. Then, if the producing party is
way to stick it to a plaintiff who does not By not allowing him to see certain informa- careless or deliberately classifies non-con-
have lots of money to burn. Cagey defen- tion, the defendant was trying to force us to fidential information as confidential, you
dants try to use these orders to block a retain an outside expert. But where would will have a way to fight it. The South
plaintiff from access to discovery, forcing we have looked for such an expert? Well, Carolina district court has taken good cause
the plaintiff — whose resources may naturally, in the scanner radio industry. It seriously. Local Rule 5.03 says:
already be limited — to spend scarce funds may well have been impossible to find an A party seeking to file documents
on an outside expert retained to do work the expert who did not have a conflict. Our under seal shall file and serve a
plaintiff himself could do, at least in part. client, who had been independent for many “Motion to Seal” accompanied by a
34 INTELLECTUAL PROPERTY TODAY OCTOBER, 2003
memorandum. See Local Civil Rule shall reflect that the motion and By their signatures to this
7.04. The memorandum shall: (1) memorandum were filed and were Stipulation and Protective Order,
identify, with specificity, the docu- supported by a sealed attachment counsel of record for the parties
ments or portions thereof for which submitted for in camera review. hereby consent to and agree not to
sealing is requested; (2) state the The Clerk shall provide public object to a request by any other Party
reasons why sealing is necessary; (3) notice of the Motion to Seal in the for such in camera proceedings in
explain (for each document or group manner directed by the Court. chambers or conducting proceedings
of documents) why less drastic alter- Absent direction to the contrary, this closed to the general public with
natives to sealing will not afford ade- may be accomplished by docketing respect to such confidential informa-
quate protection; and (4) address the the motion in a manner that discloses tion.
factors governing sealing of docu- its nature as a motion to seal. Where did these lawyers go to school?
ments reflected in controlling case This provision is absurd. Don’t agree to
law. E.g., Ashcroft v. Conoco, Inc., Citizens and other cases base their rea- anything like this.
218 F.3d 288 (4th Cir.2000); and In re soning on public access to court proceed- We’ll come back to this topic with a few
Knight Publishing Co., 743 F.2d 231 ings and records, especially those more thoughts next month. The first lesson
(4th Cir. 1984). A non-confidential documents that are filed with the court or here is that protective orders should protect
descriptive index of the documents at used at trial. The South Carolina Local legitimate rights, not distort the substance
issue shall be attached to the motion. Rule I quoted above also prohibits the fil- of the case, or its outcome. A protective
A separately sealed attachment ing of settlement agreements under seal. order should not be used to conceal docu-
labeled “Confidential Information to See Local Rule 5.03. The concern was that ments that aren’t truly confidential, and
be Submitted to Court in Connection the public would be unable to learn about should be written in clear and simple lan-
with Motion to Seal” shall be submit- dangerous products or threats to health. But guage so it can be easily understood and
ted with the motion. This attachment one wacky protective order I have seen is obeyed. Above all, it is not right to use an
shall contain the documents at issue reminiscent of the Star Chamber with this order simply to exclude a party from knowl-
for the Court’s in camera review and goofy provision about conducting proceed- edge to impact that party’s ability to con-
shall not be filed. The Court’s docket ings in secret: duct the case. IPT
CAS INTRODUCES SCIENCE IPSM – THE ON-DEMAND SEARCH SERVICE
FOR SCIENTIFIC AND TECHNICAL INFORMATION
Chemical Abstracts Service (CAS) has launched a new service, Science CAS identifies its technical advisory team of CAS scientists as a clear
IP (www.ScienceIP.org), building upon CAS’ greater than twenty-year advantage of Science IP. These Science IP advisors are experts in their
commitment to providing personalized search services to the patenting respective fields who, as part of their CAS responsibilities, are constantly
community. The announcement was made to coincide with the American immersed in the patents and literature of their particular subject area. The
Bar Association’s annual meeting being held this week in San Francisco. collective experience of these individuals is available to assist the research
Science IP will meet the needs of information professionals, attorneys, staff in preparing the most comprehensive search strategies possible.
and others in the patenting and research and development communities Customers of CAS over the years expressed their satisfaction with the
who do not have the time, staff or expertise to meet their current scientific information and support they have received for individualized search
information retrieval needs. CAS creates and distributes the largest and requests:
most prestigious databases in chemistry and houses the world’s largest “I have used CAS’s search service for about eight years. When I’ve
collection of substance information; Science IP researchers have a unique described my need for information, they have been adept at formulating
combination of scientific expertise and online database experience. .
a responsive search query,” said Shawn P Foley, Esq.,Partner at Lerner,
Science IP reports will support decisions such as prior art/patentabil- David, Littenberg, Krumholz and Mentlik. “I have also been impressed
ity for the prosecution of new patents, freedom-to-practice/operate for with their insightful, prompt and courteous service.”
new and existing technologies, and patent validity for infringement liti- Science IP can assist organizations with a variety of different search-
gation. In addition to employing industry experts in patents and scien- ing needs in the field of scientific intellectual property protection.
tific searching and retrieval as researchers, Science IP will also draw Services run the gamut from a relatively simple literature search for
upon a team of CAS scientists with in-depth knowledge of specialized prior art to more involved projects that support attorneys writing
areas, including Markush chemical structures, nucleic and amino acid patentability, freedom-to-practice/operate and validity opinions.
sequences, polymers, molecular biology and genetics, material sciences, CAS, a division of the American Chemical Society, is an organization
medical devices, and pharmaceuticals. These experts ensure that of scientists creating and delivering the most complete and effective dig-
searches are conducted with the benefit of the greatest possible techni- ital information environment for scientific research and discovery. CAS
cal knowledge. provides pathways to published research in the world’s journal and
“The value and importance of intellectual property to business deci-
patent literature—virtually everything relevant to chemistry plus a
sion making has been on the rise. For nearly 100 years CAS has been
wealth of information in the life sciences and a wide range of other sci-
the resource of record for chemical and related scientific patents. With
entific disciplines—back to the beginning of the twentieth century. CAS
Science IP, we are adding the human element to the equation: our search
professionals will provide direct, rapid assistance to the patenting com- publishes the print version of Chemical Abstracts (CA), related publi-
munity,” said CAS Director Robert J. Massie. cations and CD-ROM services; operates the CAS Chemical Registry;
According to Dr. Michael W. Dennis, Director of Planning and produces a family of online databases; and offers the SciFinder desktop
Development, “The desirability of a new on-demand search service that research tool. CAS operates STN International, a network of scientific
draws upon the expertise of CAS scientists was apparent, considering and technical databases, in association with FIZ Karlsruhe in Germany
the growth in new patent applications and the demand for additional and the Japan Science and Technology Corporation. The CAS Web site
resources to supply the needs of the R&D and patenting communities. is at http://www.cas.org.
This is especially true in regard to discovering relevant prior art.”
INTELLECTUAL PROPERTY TODAY OCTOBER, 2003 35
