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Fleming v. Escort

October 19, 2010


The opinion of the court was delivered by: Honorable B. Lynn Winmill Chief U. S. District Judge



Plaintiff Fleming alleges that defendants Escort and Beltronics (hereinafter collectively referred to as Escort) are infringing its patents on radar detectors. The parties have discovery disputes that the Court's staff attempted unsuccessfully to mediate. The Court will resolve the disputes below.


Protective Order

The parties have raised -- in a formal motion and by informal discovery mediation conference -- a question about the Protective Order. Specifically, the plaintiff Fleming asks to modify the Protective Order to allow him to view information the defendants have designated "attorneys eyes only." The defendants object, claiming Fleming has no need to see the documents and that he could use the information to obtain a competitive advantage over defendants.

The Court's analysis begins with the undisputed fact that the material Fleming wants to view is sensitive proprietary and trade secret material. Originally, Fleming agreed to screen himself from viewing confidential material because he was pursuing a radar detector patent application in the United States Patent Office. But Fleming has now represented that all his patent prosecution activities came to a complete and permanent close on July 20, 2010. See Fleming Declaration Dkt. 70-2 at ¶ 8. Due to this change of events, Fleming seeks to modify the Protective Order so that he is no longer subject to that ban.

The standard the Court must use to resolve this dispute is set out in Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). The Court must "balance the risk to [defendants] of inadvertent disclosure of trade secrets to competitors against the risk to [Fleming] that protection of [defendants'] trade secrets [will] impair[] prosecution of [Fleming's] claims."

Defendants argue that Fleming does not need to see this information because he has technical experts who can review the material for him. But this is not the typical case where the plaintiff is an assignee of the inventor; here, the plaintiff claims to be the inventor and to have more technical expertise than even his own experts. See Fleming Declaration at ¶ 10. In this case, more than most, the plaintiff would have special insight into infringement and prior art issues that would make it meaningful for him to examine the confidential information on these issues.

The defendants' argument picks up more strength when applied to financial documents. Here Fleming has no special expertise to bring to bear. As Fleming's counsel conceded at the informal conference, his client does not have the same critical need to see financial documents as he had to see infringement and prior art related documents.

This discussion establishes that Fleming has a real need to see documents related to infringement and prior art. The question under Brown Bag is whether that need outweighs the risk to defendants that trade secrets will be disclosed to competitors.

Whatever risk existed when Fleming was pursuing a radar detection patent is now over since it is undisputed that Fleming has closed that pursuit. Moreover, after viewing the confidential information, Fleming cannot "prepare, prosecute, supervise, or assist in the prosecution of any patent application claiming radar detector technology within two (2) years from the disclosure of such technical information.." See Protective Order Dkt. 35.

Defendants argue that Fleming has a business relationship with defendants' competitor K40. But that relationship involves nothing more than Fleming licensing his patent to K40. While defendants point to a Non-Disclosure Agreement (NDA) whereby Fleming and K40 agree to exchange confidential information, the NDA relates entirely to the license agreement, and there is no other relationship between K40 and Fleming. See Finley Declaration Dkt. 75-1.

The Court cannot find that Fleming has business interests in competition with defendants that might preclude him from viewing this information. Under Brown Bag, the Court must also consider whether Fleming might inadvertently disclose the secrets to defendants' competitors. Brown Bag, 960 ...

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