Case 6:12-cv-00799-JRG Document 51 Filed 07/23/13 Page 1 of 5 PageID #: 1597
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`C.A. No. 6:12-cv-00799-LED
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`INVENSYS SYSTEMS, INC.,
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`v.
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`Plaintiff,
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`EMERSON ELECTRIC CO. and
`MICRO MOTION INC., USA,
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`Defendants,
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`and
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`MICRO MOTION INC., USA,
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`Counterclaim-Plaintiff,
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`v.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant.
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`JOINT BRIEF ON DISPUTE REGARDING PROTECTIVE ORDER
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`Pursuant to the Court’s Order of July 9, 2013 (Dkt. No. 43), Plaintiff and Counterclaim-
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`Defendant Invensys Systems, Inc. (“Invensys”), and Defendant Emerson Electric Co. and
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`Defendant and Counterclaim-Plaintiff Micro Motion, Inc. (“Micro Motion”), submit the attached
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`agreed-upon Discovery, Docket Control,1 and ESI Orders, attached hereto as Exhibits B, C, and
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`D, respectively, as well as this joint brief setting forth the parties’ respective positions on their
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`remaining disagreement over the proposed Protective Order, attached hereto as Exhibit A.2
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`1 Micro Motion has proposed incorporating dates into the Docket Control Order that track the Federal Circuit
`Advisory Council’s “Model Order Limiting Excess Patent Claims and Prior Art,” which requires the parties to
`serve Preliminary and Final Elections of Asserted Claims and Asserted Prior Art.
`Invensys has requested
`additional time to consider the proposal, and the parties have agreed to further meet and confer regarding this
`issue by no later than July 31, 2013. To the extent the parties are unable to reach an agreement, the parties have
`agreed to file a short joint motion to the Court outlining their respective positions no later than August 2, 2013.
`2 The parties have met and conferred in an attempt to resolve their disputes. Although the parties were able to
`resolve most of their disagreements, the following dispute remains outstanding.
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`1
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`Case 6:12-cv-00799-JRG Document 51 Filed 07/23/13 Page 2 of 5 PageID #: 1598
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`I.
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`Protective Order
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`A.
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`Section 5(d) (Employees Who May See Confidential Documents)
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`1.
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`Invensys’s Proposal and Argument
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`Invensys’s Proposal: No Undertaking of Appendix B is necessary for access to
`first tier “CONFIDENTIAL” material by designated employees.
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`Invensys’s Argument: The portion of § 5(d) to which the parties have agreed
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`allows both parties to reveal the other parties’ “CONFIDENTIAL” information to a small group
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`of employees in order to facilitate both the parties’ prosecution of this case and settlement
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`negotiations. There is no need for the detailed and time consuming procedure for resolving
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`disputes over the designation of those employees that Emerson proposes.
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`Emerson’s primary concern appears to be the disclosure of competitive information to
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`Invensys’s employees (and vice-versa). But under Invensys’s proposed § 5(d), designated
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`employees would only be allowed to see “CONFIDENTIAL” documents, not “RESTRICTED—
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`ATTORNEYS’ EYES ONLY” and “RESTRICTED CONFIDENTIAL SOURCE CODE”
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`documents.
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`The parties have already agreed that “ATTORNEYS’ EYES ONLY” and
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`“SOURCE CODE” documents cannot be disclosed to the parties’ employees, including those
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`designated under § 5(d).
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`See Proposed Protective Order §§ 9, 10(e). Accordingly, any
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`confidential research and development, financial, technical or trade secret information that
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`should not be disclosed to employees designated under § 5(d) can and should be labeled
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`“ATTORNEYS’ EYES ONLY” See Protective Order, paragraph 8.
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`2.
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`Micro Motion’s Proposal and Argument
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`Micro Motion’s Proposal: Before access is given to the designated employees
`discussed in this paragraph, the identity of the designated employee, including name and
`role, shall be provided to the producing Party at least five (5) days before access to the
`DESIGNATED MATERIAL is to be given to the employee. If a producing Party objects
`to disclosure of the DESIGNATED MATERIAL to the employee, the Parties agree to
`promptly confer and use good faith to resolve any such objection.
`If the Parties are
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`2
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`Case 6:12-cv-00799-JRG Document 51 Filed 07/23/13 Page 3 of 5 PageID #: 1599
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`unable to resolve any objection, the objecting Party may file a motion with the Court
`within five (5) days of the notice, or within such other time as the Parties may agree,
`seeking a protective order with respect to the proposed disclosure. The objecting Party
`shall have the burden of proving the need for a protective order. No disclosure shall
`occur until all such objections are resolved by agreement or Court order.
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`DESIGNATED MATERIAL, including all copies, duplicates, abstracts, indexes,
`summaries, descriptions, and excerpts or extracts, shall be used by the employee only in
`the litigation of this Action and shall not be used for any other purpose. Within sixty (60)
`days of final termination of this Action, including any appeals, all DESIGNATED
`MATERIAL,
`including
`all
`copies,
`duplicates,
`abstracts,
`indexes,
`summaries,
`descriptions, and excerpts or extracts, shall either be returned to the producing Party or be
`destroyed.
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`Micro Motion’s Argument: Micro Motion is the leader in the digital Coriolis
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`flowmeter market,
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`in which Invensys also competes. Micro Motion has spent decades
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`researching, developing, and commercializing its technology and products as well as building its
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`extensive patent portfolio. This information is proprietary, commercially sensitive, and valuable.
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`Any improper disclosure will have a serious impact on Micro Motion and harm its competitive
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`position.
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`In order to protect Micro Motion’s confidential information and to ensure that it is not
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`being used by Invensys in this litigation in an attempt to gain an unfair competitive advantage,
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`Micro Motion proposed Section 5(d) of the Protective Order. Specifically, Section 5(d) requests
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`that prior to the dissemination of any DESIGNATED MATERIAL to any employee of a party,
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`the employee’s identity and role be provided to the producing party so that the producing party
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`has the opportunity to object. Section 5(d) also provides an expedited process for the parties to
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`attempt to informally resolve any disputes regarding such disclosure before seeking the Court’s
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`assistance.
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`In addition, Section 5(d) makes clear that any DESIGNATED MATERIAL shall be
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`used by the employee only in the litigation and for no other purpose.
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`It also states that the
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`DESIGNATED MATERIAL must be returned or destroyed at the end of the case.
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`3
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`Case 6:12-cv-00799-JRG Document 51 Filed 07/23/13 Page 4 of 5 PageID #: 1600
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`Invensys has failed to identify any burden or impediment in requiring advance notice of
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`the name and role of any employee that seeks a competitor’s confidential information, likely
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`because there is none. Section 5(d) is a minimal precaution that provides the necessary
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`assurance that both Micro Motion and Invensys, as competitors, know and appreciate who has
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`their confidential information.
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`Date:
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`July 23, 2013
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`Respectfully submitted,
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
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`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
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`ATTORNEYS FOR PLAINTIFF INVENSYS
`SYSTEMS, INC.
`
`/s/ Kadie M. Jelenchick
`Guy N. Harrison
`State Bar No. 00000077
`HARRISON LAW FIRM
`217 N. Center Street
`Longview, Texas 75606
`Phone: (903) 758-7361
`Fax: (903) 753-9557
`guy@gnhlaw.com and cj-gnharrison@att.net
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`4
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`Case 6:12-cv-00799-JRG Document 51 Filed 07/23/13 Page 5 of 5 PageID #: 1601
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`Linda E.B. Hansen, WI Bar No. 1000660
`Richard S. Florsheim, WI Bar No. 1015905
`Jeffrey N. Costakos, WI Bar No. 1008225
`Kadie M. Jelenchick, WI Bar No. 1056506
`Matthew J. Shin, WI Bar No. 1090096
`FOLEY & LARDNER LLP
`777 East Wisconsin Avenue
`Milwaukee, Wisconsin 53202
`Phone: (414) 271-2400
`Fax: (414) 297-4900
`lhansen@foley.com
`rflorsheim@foley.com
`jcostakos@foley.com
`kjelenchick@foley.com
`mshin@foley.com
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`ATTORNEYS for DEFENDANTS EMERSON
`ELECTRIC CO. AND MICRO MOTION, INC.
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing document was filed electronically on July 23, 2013, pursuant
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`to Local Rule CV-5(a) and has been served on all counsel who have consented to electronic
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`service. Any other counsel of record will be served by first class U.S. mail on this same date.
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
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`5