Superior Graphite Co. v. Campos

• Decision Date: 01 September 2020
• Docket Number: No. 19 C 5830,19 C 5830
• Parties: SUPERIOR GRAPHITE CO., Plaintiff, v. RAUL CAMPOS and AMERICAN ENERGY TECHNOLOGIES CO., Defendants.
• Court: U.S. District Court — Northern District of Illinois

SUPERIOR GRAPHITE CO., Plaintiff, v. RAUL CAMPOS and AMERICAN ENERGY TECHNOLOGIES CO., Defendants.

No. 19 C 5830

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

September 1, 2020

Magistrate Judge Jeffrey Cole

MEMORANDUM OPINION AND ORDER

INTRODUCTION

The Plaintiff has filed a Motion to Compel the Defendant, AETC, to Comply with Plaintiff's supplemental Rule 33 Interrogatories (Nos. 1 and 4) and Rule 34 Requests for Production (Nos. 1, 9-18, 20, 24, 27, 30, 32, 35, 38-39, 46, 76, 84). [Dkt. #77]. The Defendant has vigorously objected to the attempt at discovery and has castigated the Plaintiff for allegedly not even mentioning the language of various contracts it claims it has with various agencies of the United States that purportedly prohibit it from disclosing any information on its "fluidized bed technology." [Dkt. #81]. Yet, oddly, while AETC's responsive memorandum takes umbrage at the Plaintiff's attempts to obtain discovery, it cites no cases that would support its central thesis that its supposed "secrecy" agreements with the government preclude discovery in this case under the discovery provisions of the Federal Rules of Civil Procedure. [Dkt. #81].¹ For the following reasons, the Motion to Compel [Dkt. #77] is granted.

This case gives us at least a glimpse of the world of "high temperature fluidized bed furnace technology." The Plaintiff recites - and supports with a fair amount of documentary evidence in its Motion for a Preliminary Injunction [Dkt. #52, at 2-4] - a tale of industrial espionage in which its former employee and now Defendant, Jorge Campos, misappropriated a great deal of Plaintiff's proprietary information on this technology and sold it to Igor Barsukov, another former employee and the founder and principal of the corporate Defendant, AETC. Perhaps, not surprisingly, AETC has filed a Counterclaim against the Plaintiff, charging it with misappropriating AETC's trade secrets through one of their former employees, James Mercede. [Dkt. #64]. As in all cases, where the "truth" lies must await the unfolding of future events.

Our purview in this case is limited to discovery. This is not to denigrate in the slightest the vital importance that discovery serves in modern litigation. Indeed, their vital purpose is to assist in reaching a truthful result by eliminating what has been called "trial by ambush." See Taylor v. Illinois, 484 U.S. 400, 411-12 (1988); United States v. Proctor & Gamble Co., 356 U.S. 677, 682-83 (1958); Wright, Miller & Marcus, Federal Practice and Procedure: Civil 2d § 2001 at 40 (1994); SE-Kure Controls, Inc. v. Vanguard Product, Inc., 2007 WL 781250 at *1 (N.D.Ill. 2007); 6 Wigmore, Discovery § 1845 at 490 (3d ed. 1940). Indeed, "[p]re-trial proceedings have become more costly and important than trials themselves.'" A.H. Robins Co. v. Piccinin, 788 F.2d 994, 1013 (4th Cir. 1986). And so we turn to the precise issues at hand, mindful of Judge Moran's wise admonition that "[p]arties are entitled to a reasonable opportunity to investigate the facts - and no more." Vakharia v. Swedish Covenant Hosp., 1994 WL 75055, at *2 (N.D. Ill. 1994).

The issue at hand is AETC's failure to provide answers to interrogatories and documents responsive to certain requests served months ago in February of 2020. [Dkt. #77, ¶ 3]. AETCresponded and objected to the requests at issue on March 6 and 11, 2020. [Dkt. ##77-1, 77-2]. If the Plaintiff's Motion is any guide, Plaintiff got back to AETC with its issues regarding the objections three months later in June of 2020. [Dkt. #77, ¶. 4]. Though claiming to have abided by the meet-and-confer process, mandated by Local Rule 37.2, neither side budged. Yet, the Rule mandates that the parties meet and negotiate over their differences in good faith, which means more than paying lip service to the Rule and stubbornly adhering to one's initial preconceived assessment. See Chicago Reg'l Council of Carpenters Pension Fund v. Celtic Floor Covering, Inc., 316 F.Supp.3d 1044, 1046 (N.D. Ill. 2018)("An ultimatum on one side, met with steadfast defiance on the other, is not a good faith discussion."); Infowhyse GmbH v. Fleetwood Grp., 2016 WL 4063168, at *1 (N.D. Ill. 2016)("adamantly clinging to the positions with which they began" amounts to a failure "to comply, in good faith, with the requirements of Local Rule 37.2."). At least based on both sides' protestations of a desperate need for secrecy and confidentiality regarding all of their "high temperature fluidized bed furnace technology" it would have behooved the parties, more so than in the usual case, to have worked something out. But unfortunately, that did not occur.

ARGUMENT

A.

Significantly, the Protective Order that has been in place since September 27, 2019 specifically covers both trade secrets and information protected by statute, with two levels of confidentiality, including attorney's-eyes-only. [Dkt. #26]. One of the most commonly used safeguards in trade secret cases is, of course, disclosure only to counsel in the case. Case after case has found such a safeguard appropriate and adeqaute. See Autotech Techs. Ltd. P'ship v. Automationdirect.com, Inc., 235 F.R.D. 435, 445-46 (N.D. Ill. 2006); Blanchard and Company v.Barrick Gold Corp., 2004 WL 737485 at *10-11 (E.D.La.2004)(and cases cited); Surface Shields, Inc. v. Poly-Tak Protection Systems, Inc., 2003 WL 21800424, *1 (N.D.Ill.2003)(ordering production of customer list but allowing party to designate items as "attorney's eyes only" and strongly suggesting that parties enter into agreed protective order regarding alleged confidential information); Seaga Mfg., Inc. v. Fortune Resources Enterprises, Inc., 2002 WL 31399408, *3-4 (N.D.Ill. 2002)(allowing discovery of customer list subject to "attorney's eyes only" and allowing for removal of that restriction when warranted); N.L.R.B. v. Cable Car Advertisers, Inc., 319 F.Supp.2d 991, 999 (N.D.Cal.2004)(requiring production subject to a protective order); Liveware Publishing, Inc. v. Best Software, Inc., 252 F.Supp 2d 74, 85 (D.Del.2003)(customer lists disclosed only to "trial counsel"). Compare, CSC Holdings, Inc. v. Redisi, 309 F.3d 988, 996 (7th Cir.2002)(error to deny Defendant all access to Plaintiff's customer data base; proper course was issuance of a Protective Order limiting access to attorneys); Atmel Corp. v. St. Paul Fire & Marine, 2005 WL 3692874 (N.D.Cal.2005)(confidentiality of customer lists sufficiently protected by Protective Order); Network Computing v. Cisco Systems, 223 F.R.D. 392, 396 (D.S.C.2004)(Plaintiff ordered to provide a customer list under Protective Order).

Thus, the Confidentiality Agreement in this case clearly applies to the two issues in this current discovery dispute and allows for not one, but two levels of security. Why the parties entered into such an Agreement and asked the court to enter it if they had no intention of using it is perplexing. For that reason alone, AETC's objections are not persuasive, and the Plaintiff's Motion to Compel ought to be granted. See IDX Sys. Corp. v. Epic Sys. Corp., 285 F.3d 581, 583 (7th Cir. 2002)(pointing to the implementation of Confidentiality Agreement).

B.

AETC has certain problems with Plaintiff's discovery requests that it develops in its Response to the Plaintiff's Motion. Its objections to the many requests at issue run along two lines: whether Plaintiff has adequately alleged its trade secrets and contracts that prohibit AETC from participating in discovery in this case. Examples of the types of objections at issue are:

. . . because AETC does business with numerous governmental organizations (seethe list of such organizations in the answer to Interrogatory No. 2 below), AETC is subject to numerous very strict data security standards, among them a NIST (National Institute of Standards and Technology of the U.S. Department of Commerce) standard entitled "Protecting Unclassified Information in Nonfederal Systems and Organizations." Under this and other similar standards, AETC is held accountable for ensuring physical protection of computer systems on which military information is stored. If AETC was to provide even the model number, make and serial number of any of its computers, then a computer "super hacker" would potentially be able to park in AETC's parking lot or some area in close proximity to AETC's disclosed, identified computers, and identify AETC's computers by IP (internet protocol) scan. Then that would open the doors to system vulnerability and breach AETC's obligations to its governmental (and potentially other) clients.

***

By way of example, within the above-entitled NIST standard, AETC, a contractor under the standard, is required to "limit physical access to organizational systems, equipment, and the respective operating environments to authorized individuals," "protect and monitor the physical facility and support infrastructure for organizational systems," "escort visitors and monitor visitor activity," "maintain audit logs of physical access," "control and manage physical access devices," "enforce safeguarding measures for CUI [Controlled Unclassified Information] at alternate work sites," "protect the authenticity of communications sessions" and "protect the confidentiality of CUI at rest." Other governmental laws, executive orders, regulations, instructions, standards and guidelines referenced within the NIST standard that pertain to the protection of CUI . . .

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. . . AETC's testing procedures for fluidized bed furnace technology or components thereof, are protected from disclosure by numerous U.S. Government-controlled data security procedures including, but not limited to, the standards identified in the answer to Interrogatory No. 1 above.

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. . . information about AETC's fluidized bed furnace technology, [which is soughtby the Plaintiff] is protected from disclosure by the numerous contractual obligations AETC has with the various governmental agencies and

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