SmithKline Beecham Corp. v. Synthon Pharmaceuticals Ltd.

210 F.R.D. 163, 2002 U.S. Dist. LEXIS 19409, 2002 WL 31045352
CourtDistrict Court, M.D. North Carolina
DecidedSeptember 5, 2002
DocketNo. 1:00-CV-01179
StatusPublished
Cited by15 cases

This text of 210 F.R.D. 163 (SmithKline Beecham Corp. v. Synthon Pharmaceuticals Ltd.) is published on Counsel Stack Legal Research, covering District Court, M.D. North Carolina primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
SmithKline Beecham Corp. v. Synthon Pharmaceuticals Ltd., 210 F.R.D. 163, 2002 U.S. Dist. LEXIS 19409, 2002 WL 31045352 (M.D.N.C. 2002).

Opinion

ORDER

ELIASON, United States Magistrate Judge.

Plaintiffs, a group of pharmaceutical companies, sue the defendants (hereinafter called [165]*165“Synthon”) for patent infringement. They now have filed a motion to modify a stipulated, blanket protective order entered into between the parties. The reason for the request is their desire to use the deposition transcript of a Dr. Franz VanDahlen1 (with Exhibits 2 & 4) to support their opposition to summary judgment filed in litigation pending in the United States District Court for the Eastern District of Pennsylvania which involves the same ’944 patent at issue here. The Pennsylvania litigation is a consolidated action involving over sixteen parties. During the pendency of the instant motion, a protective order similar to the one entered in this case has been entered in the Pennsylvania action. Plaintiffs requested that Synthon consent to plaintiffs’ use of the discovery material in the Pennsylvania litigation but were denied permission.

The question plaintiffs raise is whether this Court should amend a stipulated, blanket protective order to enable them to use protected confidential documents in another court in defense of a summary judgment motion involving one of the patents at issue in this case. This precise issue has not been decided by the Fourth Circuit Court of Appeals, but other courts have faced it.

While plaintiffs contend that courts have inherent power to modify protective orders, they also argue that the protective order itself contemplates modification. Plaintiffs point to paragraph 5 of the protective order which provides that should any party find it necessary to disclose information to persons other than outside counsel, in-house counsel, experts and consultants, employees or assistants of the litigation or the court, the parties shall attempt to reach an agreement and failing that, may file a motion to the court for resolution of the issue. Plaintiffs also reference paragraph 24 which provides: “This Order is without prejudice to the right of either party to seek relief from the court, upon good cause shown, from any of the restrictions provided above or to impose additional restrictions on the disclosure of any information or material produced.” These clauses are ambiguous. In fact, the protective order neither allows nor prohibits use of confidential material outside of this litigation. Therefore, the Court will need to examine whether it possesses the inherent power to modify the protective order.

Plaintiffs argue that they have shown a need for a modification of the protective order, that they do not seek a massive release, but only a few confidential documents, and that Synthon will not be prejudiced because there is a protective order covering the information in the Pennsylvania litigation. Plaintiffs tout the fact that the Pennsylvania protective order would limit the use of the Dr. VanDahlen material for purposes of that litigation.2 That protective order contemplates production of confidential information by non-parties and grants them standing to protect confidentiality under the protective order.

Synthon opposes plaintiffs’ motion. It explains that in his deposition, Dr. VanDahlen discusses Synthon’s confidential efforts to develop a wet granulation process and fear sharing that information with sixteen different law firms representing a number of competitors. Synthon contends that this confidential information was only divulged in reliance upon the confidentiality guaranteed by the protective order in this case. As a consequence, it asserts that plaintiffs have the burden of showing good cause for any modification and they cannot make this showing because plaintiffs should have fore[166]*166seen the desire to use discovery in this case in other cases and negotiated that into the protective order.3

Initially, the Court rejects Synthon’s suggestion that a protective order may not be modified absent a clause permitting the same. Courts have the inherent power to modify protective orders, including protective orders arising from a stipulation by the parties. United Nuclear Corp. v. Cranford Ins. Co., 905 F.2d 1424, 1427 (10th Cir.1990), cert. denied sub nom, American Special Risk Ins. Co. v. Rohm & Haas Co., 498 U.S. 1073, 111 S.Ct. 799, 112 L.Ed.2d 860 (1991); see Jochims v. Isuzu Motors, Ltd., 148 F.R.D. 624, 630 (S.D.Iowa)(collecting cases), modified by, 151 F.R.D. 338 (S.D.Iowa 1993). Therefore, the fact that the instant protective order does not contain a clause allowing use of confidential material in other litigation, while not irrelevant, does not bar the Court from modifying the protective order to allow such use.

A number of factors may be employed to help guide a court in exercising its discretion as to whether to modify a protective order. These factors include: the reason and purpose for a modification, whether a party has alternative means available to acquire the information, the type of protective order which is at issue, and the type of materials or documents which are sought.

The party seeking to modify a protective order bears the burden of showing good cause for the modification. S.E.C. v. TheStreet.Com, 273 F.3d 222, 229 (2d Cir.2001); Jochims, 151 F.R.D. at 342. Some courts even require a showing of compelling need, improvidence in consenting to the order, or some extraordinary circumstance. S.E.C., 273 F.3d at 229; but contrast Beckman Industries, Inc. v. International Ins. Co., 966 F.2d 470, 476 (9th Cir)(reasonable need), cert. denied sub nom, International Ins. Co. v. Bridgestone/Firestone, Inc., 506 U.S. 868, 113 S.Ct. 197, 121 L.Ed.2d 140 (1992); and United Nuclear, 905 F.2d at 1426 (adopting reasonable need test but noting wide variety which have been employed). A number of courts have found sufficient need for modification to arise from efforts to avoid duplica-tive discovery when parties in other litigation seek to obtain the discovery in concluded litigation which involved a party to their present lawsuit. These courts have permitted timely intervention to obtain the discovery because of the considerable efficiency and savings of time and effort in avoiding duplica-tive discovery. Beckman Industries, 966 F.2d 470; United Nuclear, 905 F.2d 1424; Jochims, 148 F.R.D. 624, as modified, 151 F.R.D. 338; but see Empire Blue Cross and Blue Shield v. Janet Greeson’s A Place For Us, Inc., 62 F.3d 1217 (9th Cir.1995) (intervention untimely).

Even when a legitimate reason for the modification is proposed, such as a need to use the information in other litigation, the movant still should show the inability to reasonably obtain the information by alternative means. There are a number of prudential reasons for this requirement.

A court should be hesitant to modify protective orders for matters unrelated to the litigation in front of it because otherwise, in the long run, parties may begin to distrust protective orders.

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Cite This Page — Counsel Stack

Bluebook (online)
210 F.R.D. 163, 2002 U.S. Dist. LEXIS 19409, 2002 WL 31045352, Counsel Stack Legal Research, https://law.counselstack.com/opinion/smithkline-beecham-corp-v-synthon-pharmaceuticals-ltd-ncmd-2002.