Case 3:18-cv-00347-CAB-MDD Document 141 Filed 01/15/19 PageID.16491 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`NUVASIVE, INC. a Delaware
`corporation,
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`v.
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` Case No.: 18cv347-CAB-MDD
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`ORDER ON JOINT MOTION FOR
`Petitioner,
`DETERMINATION OF
`DISCOVERY DISPUTE
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`[ECF No. 129]
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`ALPHATEC HOLDINGS, INC. a
`Delaware corporation and
`ALPHATEC SPINE, INC. a
`California corporation,
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`Respondent.
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`BACKGROUND
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`At issue is the insertion of sharing language into three provisions of the
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`Protective Order Governing Confidential Information between the parties.
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`Plaintiff NuVasive seeks to include the attorneys of record for five additional
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`cases in the operative definition of “Outside Counsel,” while Defendant
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`Alphatec seeks to limit the term to the attorneys of record in the instant case
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`and excluding in-house counsel. (ECF No. 129 at 8). With their proposed
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`expanded definition of Outside Counsel, Plaintiff then proposes that
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`information designated as “CONFIDENTIAL” or “HIGHLY
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`Case 3:18-cv-00347-CAB-MDD Document 141 Filed 01/15/19 PageID.16492 Page 2 of 5
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`CONFIDENTIAL-ATTORNEYS EYES ONLY” be automatically available to
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`the attorneys of record for use in not only the instant patent infringement
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`case, but also the five collateral cases. (Id. at 9). Defendant opposes the
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`sharing provisions.
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`The proposed collateral litigation is as follows:
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`1. NuVasive, Inc. v. Miles, et al., No. 2017-0720-SG, in the Chancery Court of
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`the State of Delaware: breach of fiduciary duties and the covenant not to
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`compete.
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`2. Alphatec Spine, Inc., et al. v. NuVasive, Inc., No. 37-2017-00038583-CU-
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`BC-CTL, in the San Diego Superior Court: breach of a non-disclosure
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`agreement.
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`3. Pimenta v. NuVasive, No. 37-2018-00016298-CU-BC-CTL, in the San Diego
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`Superior Court: breach of an employment contract.
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`4. Miles v. NuVasive, Inc., No. 2018-0397-SG, in the Chancery Court of the
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`State of Delaware: seeking attorneys’ fees pursuant to an indemnity
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`agreement.
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`5. Alphatec Spine, Inc. v. NuVasive, Inc., No. 37-2018-00016446-CU-MC-CTL,
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`in the San Diego Superior Court: unfair competition.
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`Plaintiff contends that these five collateral cases are similar to the
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`instant case as they all “arose from Alphatec’s poaching of NuVasive’s
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`executive team….” (Id. 129 at 16). Plaintiff argues that the sharing
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`provisions promote transparency and eliminate attempts to “‘game’ the
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`system and promotes full and fair disclosure and discovery.” (Id. at 17).
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`Defendant argues that Plaintiff’s proposed provisions encourage abuse and
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`ensures that “no single court is in complete control of the discovery in the
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`cases before it.” (Id. at 20). Defendant contends that the “wholesale and
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`automatic” sharing and use of discovery produced for a patent infringement
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`Case 3:18-cv-00347-CAB-MDD Document 141 Filed 01/15/19 PageID.16493 Page 3 of 5
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`matter with five collateral cases, none of which are patent infringement
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`cases, is inappropriate and encourages discovery abuse. (Id. at 20-21).
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`LEGAL STANDARD
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`The Ninth Circuit “strongly favors access to discovery materials to meet
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`the needs of parties engaged in collateral litigation.” Foltz v. State Farm
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`Mut. Auto. Ins. Co., 331 F.3d 1122 (9th Cir. 2003) (citing Beckman Indus. Inc.
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`v. Int’l Ins. Co., 966 F.2d. 470, 475 (9th Cir. 1992)). A court, however, should
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`not approve a request to share discovery automatically. Id. at 1132. “As an
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`initial matter, the collateral litigant must demonstrate the relevance of the
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`protected discovery to the collateral proceedings and its general
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`discoverability therein. Requiring a showing of relevance prevents collateral
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`litigants from gaining access to discovery materials merely to subvert
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`limitations on discovery in another proceeding.” Id. Importantly, “[s]such
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`relevance hinges on the degree of overlap in facts, parties, and issues between
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`the suit covered by the protective order and the collateral proceedings.” Id.
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`The court that enters the protective order must “satisfy itself that the
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`protected discovery is sufficiently relevant to the collateral litigation that a
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`substantial amount of duplicative discovery will be avoided….” Id. Further,
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`if the court finds relevancy, it must then “weigh the countervailing reliance
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`interest of the party [opposing sharing] against the policy of avoiding
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`duplicative discovery.” Id. at 1133.
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`However, the court who issues the protective order is not the one that
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`determines whether the collateral litigant will ultimately obtain the
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`discovery materials. Rather, any “disputes over the ultimate discoverability
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`of specific materials covered by the protective order must be resolved by the
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`collateral courts.” Id.
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`The Foltz court further explained:
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`Id.
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`Allowing the parties to the collateral litigation to raise specific
`relevance and privilege objections to the production of any
`otherwise properly protected materials in the collateral courts
`further serves to prevent the subversion of limitations on
`discovery in the collateral proceedings. These procedures also
`preserve the proper role for each of the courts involved: the court
`responsible for the original protective order decides whether
`modifying the order will eliminate the potential for duplicative
`discovery.
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`DISCUSSION
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`Here, Plaintiff seeks to circumvent the above principles and procedures
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`by including, in the first instance, a sharing provision in the protective order
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`to be entered in this case. In other words, Plaintiff seeks the ability to share
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`confidential documents obtained in this case with collateral litigants without
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`needing to seek to modify the protective order and obtain a relevancy
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`determination from the Court, and without requiring the collateral courts to
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`resolve any disputes which may arise with respect to discoverability of the
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`materials in the collateral cases.
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`The Court is not persuaded by Plaintiff’s argument that all discovery in
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`this case is necessarily relevant to the other cases. Further, the Court is not
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`persuaded by the arguments in favor of an automatic sharing provision.
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`Plaintiff, for example, argues that because their in-house counsel cannot “un-
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`know” or “un-learn” information from discovery in this case, and because
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`judicial economy dictates that they decrease duplicative discovery across the
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`six cases, the sharing provision is “practically necessary.” (ECF No. 129 at
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`18). Entering the non-sharing provisions in the protective order, however,
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`will not prevent sharing of discovery in the collateral cases. Rather,
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`collateral litigants desiring any discovery produced pursuant to the protective
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`order will simply have to go through appropriate steps to obtain that
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`Case 3:18-cv-00347-CAB-MDD Document 141 Filed 01/15/19 PageID.16495 Page 5 of 5
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`discovery, as set forth in Foltz. The Court will not permit collateral litigants
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`to gain automatic access to Defendants’ confidential materials without
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`providing some procedural safeguards regarding the dissemination of those
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`materials, and without following proper procedure.
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`CONCLUSION
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`The Court finds that Defendant’s proposed protective order should be
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`entered. The entry of Defendant’s protective order provisions will not
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`prejudice any potential collateral litigants to move for modification of the
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`protective order in the future.
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`IT IS SO ORDERED.
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`Dated: January 15, 2019
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