United States District Court, D. Arizona
A. Teilborg, Senior United States District Judge.
December 20, 2018, this Court granted Plaintiff IceMOS
Technology Corporation (“IceMOS”) and Defendant
Omron Corporation (“Omron”)'s request for a
protective order. (Doc. 87). Pending before the Court now is
IceMOS's Motion to Modify the Protective Order (Doc.
314). Omron filed an Opposition to Plaintiff's Motion to
Modify the Protective Order (Doc. 284), and IceMOS filed a
Reply in Support of its Motion to Modify the Protective Order
(Doc. 316). The Court now rules on the motion. The Court will
not address IceMOS's Motion to Seal (Doc. 313) its
original Motion to Modify (Doc. 254) because the Court has
only relied on the redacted Motion to Modify the Protective
Order (Doc. 314) in reaching its conclusion. The same is true
for the Response (Doc. 284).
to the parties' stipulation, the Court entered a
protective order that permitted the parties to designate
materials as “CONFIDENTIAL” or
“ATTORNEYS' EYES ONLY.” (Doc. 86-1 at 3-4).
The protective order provides that material so designated
“shall not be used or disclosed by the parties, counsel
for the parties, or any other persons identified in
subparagraph (b) for any purpose whatsoever other than in
this litigation and any appeals thereof.” (Id.
August 19, 2019, IceMOS filed a Motion to Modify the
Protective Order, requesting to use information from
confidential documents produced by Omron in a new lawsuit
against third party Shindengen Electric Manufacturing Co.,
Ltd. (“ShinDengen”) for “theft of trade
secrets, fraud, fraudulent inducement, patent infringement
and civil conspiracy.” (Doc. 314 at 2, 8). IceMOS
claims that those documents prove that ShinDengen
“conspired with Omron in systematic efforts to
misappropriate, misuse and profit illegally from the
unauthorized use of IceMOS's Proprietary
Information.” (Id. at 2). Accordingly, IceMOS
moves to amend Paragraph 5(a) of the protective order to say:
Confidential Information shall not be used or disclosed by
the parties, counsel for the parties, or any other persons
identified in subparagraph (b) for any purpose whatsoever
other than use in this or any collateral litigation (and
any appeals thereof). Any use of material designated as
Confidential Information in this case in collateral
litigation is conditioned upon the material being designated
for production in the collateral litigation with the same
level of confidentiality as designated in this action.
(Id. at 7) (emphasis added).
Rule of Civil Procedure (“Rule”) 26(c) permits
the Court to issue protective orders “for good
cause” to “protect a party or person from
annoyance, embarrassment, oppression, or undue burden or
expense” during the discovery process. Fed.R.Civ.P.
26(c)(1). “A party asserting good cause bears the
burden, for each particular document it seeks to protect, of
showing that specific prejudice or harm will result if no
protective order is granted.” Foltz v. State Farm
Mut. Auto. Ins. Co., 331 F.3d 1122, 1130 (9th Cir.
seeking the modification of a protective order to permit
protected materials to be discoverable in collateral
litigation must follow a three-step process. See Darby v.
Safeco Ins. Co. of Am., 2012 WL 5512576, at *2 (D. Ariz.
Nov. 14, 2012). “As an initial matter, the collateral
litigant must demonstrate the relevance of the protected
discovery to the collateral proceedings and its general
discoverability therein.” Foltz, 331 F.3d at
1132. “Such relevance hinges ‘on the degree of
overlap in facts, parties, and issues between the suit
covered by the protective order and the collateral
proceedings.'” Id. (citation omitted).
Second, the court must be satisfied that “the protected
discovery is sufficiently relevant to the collateral
litigation that a substantial amount of duplicative discovery
will be avoided by modifying the protective order.”
Id. “The court that issued the [protective]
order is in the best position to make the relevance
assessment for it presumably is the only court familiar with
the contents of the protected discovery.” Id.
Finally, if the court modifies the protective order to permit
the discovery, responsibility shifts to the court overseeing
the collateral litigation to determine whether the collateral
litigants may ultimately obtain the materials in discovery.
Id. at 1132-33; see also Darby, 2012 WL
5512576, at *2.
interests of judicial economy “strongly favor access to
discovery materials to meet the needs of parties engaged in
collateral litigation.” Id. at 1131.
“Allowing the fruits of one litigation to facilitate
preparation in other cases advances the interests of judicial
economy by avoiding the wasteful duplication of
discovery.” Id. Thus, when determining whether
to modify the protective order, the court must “weigh
the countervailing reliance interest of the party opposing
modification against the policy of avoiding duplicative
discovery.” Id. at 1133. A party's
interest in preserving secrecy against the public “can
be accommodated by placing the collateral litigants under the
same restrictions on use and disclosure contained in the
original protective order.” Id. (quoting
United Nuclear Corp. v. Cranford Ins. Co., 905 F.2d
1424, 1428 (10th Cir. 1990)).
bears the burden of showing that the confidential material in
question is relevant to collateral litigation. See
Foltz, 331 F.3d at 1132. Although IceMOS attached to its
motion a list of hundreds of confidential documents it
apparently plans to use in a new suit against ShinDengen, it
never cited or discussed any of them, (compare Doc.
314, n.1- 29, with Doc. 314-1)-particularly
neglecting to explain how these documents would support
specific claims against ShinDengen. (See Doc. 314 at
2-6). Rather, IceMOS broadly referred to the whole ...