Wilson, In re, 97-1908

• Decision Date: 26 June 1998
• Docket Number: No. 97-1908,97-1908
• Citation: 149 F.3d 249
• Parties: , 47 U.S.P.Q.2d 1212, 10 Fourth Cir. & D.C. Bankr. 405 In re Jon S. WILSON, Debtor. COOK GROUP, INCORPORATED; Wilson-Cook Medical, Incorporated; Cook, Inc.; Vance Products, Incorporated; Sabin Corporation, Plaintiffs-Appellants, v. C.R. BARD, INCORPORATED, Intervenor-Appellee.
• Court: U.S. Court of Appeals — Fourth Circuit

Page 249

149 F.3d 249

41 Fed.R.Serv.3d 106, 47 U.S.P.Q.2d 1212,

10 Fourth Cir. & D.C. Bankr. 405

In re Jon S. WILSON, Debtor COOK GROUP, INCORPORATED; Wilson-Cook Medical Incorporated; Cook, Inc.; Vance Products Incorporated; Sabin Corporation Plaintiffs-Appellants, v. C.R. BARD, INCORPORATED, Intervenor-Appellee.

No. 97-1908.

United States Court of Appeals, Fourth Circuit.

Argued Jan. 27, 1998.

Decided June 26, 1998.

ARGUED: Aaron J. Kramer, Schiff, Hardin & Waite, Chicago, IL, for Appellants. Michael Lindsay Robinson, Robinson & Lawing, Winston-Salem, NC, for Appellee. ON BRIEF: Aphrodite Kokolis, Linda K. Stevens, Ronald Wilder, Schiff, Hardin & Waite, Chicago, IL; Jeffrey E. Oleynik, Jimmy W. Phillips, Jr., Brooks, Pierce, McLendon, Humphrey & Leonard, Greensboro, NC; William B. Sullivan, Womble, Carlyle, Sandridge & Rice, Winston-Salem, NC, for Appellants. Norwood Robinson, Robinson & Lawing, Winston-Salem, NC; Thomas J. Wiegand, Winston & Strawn, Chicago, IL, for Appellee.

Before HAMILTON and WILLIAMS, Circuit Judges, and PHILLIPS, Senior Circuit Judge.

Affirmed by published opinion. Senior Judge PHILLIPS wrote the opinion, in which Judge HAMILTON and Judge WILLIAMS joined.

OPINION

PHILLIPS, Senior Circuit Judge.

This is an appeal by several related companies (collectively "Cook") challenging a ruling of the Bankruptcy Court allowing disclosure of certain protected trade secret information to two high-level employees of a company, C.R. Bard, Incorporated ("Bard"), to allow Bard to defend itself against a state court action by Cook that claimed misappropriation of the trade secrets. We affirm.

I.

In 1990, Wilson-Cook Medical, Inc. ("Wilson-Cook") sued Wiltek Medical, Inc. ("Wiltek") alleging, among other things, misappropriation of trade secrets involving medical devices ("Wilson-Cook case"). In due course, the Wilson-Cook case was consolidated with an action filed by the Cook Companies against Jon Wilson ("Wilson"), the founder of Wiltek and former president of Wilson-Cook, and with Wilson's personal bankruptcy proceeding.

The consolidated action was tried without a jury before Judge William L. Stocks of the United States Bankruptcy Court for the Middle District of North Carolina. On May 22, 1995, Judge Stocks entered an order of Injunction and Judgment ("Judgment"), permanently enjoining Wilson and Wiltek from "using, licensing, marketing or otherwise displaying or disclosing" "any ... of the trade secrets ... found by this court." (JA 647.) Accompanying the Judgment was a 194-page Memorandum Opinion, Findings of Fact and Conclusions of Law ("Memorandum"). Because the Memorandum and Judgment contained trade secret information, Judge Stocks ordered that the documents be filed under seal and subject to a Stipulated Protective Order, previously entered pursuant to Fed.R.Civ.P. 26.

On July 3, 1995, Cook sued Bard in Indiana state court, alleging, among other things, misappropriation of trade secrets and violation of the injunction entered in the consolidated action. Bard was not a party in the consolidated action. Although the applicable Indiana rules of court required that documents referenced in a complaint be attached to that filing, Cook submitted neither the Memorandum nor the Judgment with its complaint. When the Indiana court ordered Cook to produce the Judgment and Memorandum, Cook indicated that it could not provide the materials because they were under seal in the consolidated action. The Indiana court then allowed Cook time to approach Judge Stocks regarding a lifting of the protective order. When Cook failed to act, Bard moved to intervene in the consolidated action to unseal the Memorandum and Judgment. After a hearing, Judge Stocks entered a written order allowing disclosure of the papers to Bard's counsel, independent experts, and two of its employees ("October Order"). ^* The order further provides:

Each of the persons to whom the Memorandum ... and Judgment are made available ... shall agree, expressly and in writing, to abide by this Order and the Stipulated Protective Order entered by this court ..., and each such person shall thereby consent to the jurisdiction and contempt power of this Court with respect to enforcement of this order and the Stipulated Protective Order.

(JA 332.)

When Cook challenged that portion of the October Order requiring disclosure to Bard's employees, the United States District Court for the Middle District of North Carolina affirmed. On appeal to this court, Cook again challenges only that portion of the October Order allowing disclosure to Bard's employees. Pursuant to various stay orders, disclosure of the Judgment and Memorandum has not been made yet to Bard's employees.

II.

On appeal from a district court's order affirming an order of a bankruptcy court, this court reviews the decision of the district court de novo, see In Re Runski, 102 F.3d 744, 745 (4th Cir.1996), and applies the same standard of review that the district court applied to the bankruptcy court's decision. See In Re Southeast Hotel Properties Ltd. Partnership, 99 F.3d 151, 154 (4th Cir.1996). As we have noted, a protective order entered pursuant to Fed.R.Civ.P. 26(c) is reviewed for abuse of discretion. See M & M Med. Supplies & Svc. Inc. v. Pleasant Valley Hosp., Inc., 981 F.2d 160, 163 (4th Cir.1992) (en banc), cert. denied, 508 U.S. 972, 113 S.Ct. 2962, 125 L.Ed.2d 662 (1993).

Fed.R.Civ.P. 26(c)(7) provides that "for good cause shown," a court may enter a protective order requiring "that a trade secret ... not be revealed or be revealed only in a designated way." To obtain a protective order under Rule 26(c), the party resisting discovery must establish that the information sought is covered by the rule and that it will be harmed by disclosure. See 8 Charles Alan Wright & Richard L. Marcus, Federal Practice and Procedure § 2043, at 555-57 (2d ed.1994). If this showing is made, the party seeking the materials then must establish that the information is sufficiently necessary and relevant to his case to outweigh the harm of disclosure. See id. at 559.

Here, it is undisputed that the Judgment and Memorandum contain trade secrets covered by Rule 26(c). Also, Cook concedes that the information is relevant to Bard's case. Cook argues, however, that Bard has not established necessity. Cook further contends that the lower courts failed to consider the harm it would suffer from disclosure and to weigh that harm against Bard's claimed need for the documents.

Cook argues that Bard can adequately defend itself in the Indiana action without the Judgment and Memorandum being disclosed to its employees. According to Cook, "numerous precedents" recognize that a competitor can litigate trade secret issues without the secrets being disclosed to its employees, provided they are disclosed to its outside counsel and/or independent experts. As Judge Stocks noted, however, the Indiana action is not a simple trade secrets case; Cook's Indiana lawsuit expressly seeks to enforce against Bard the terms of the injunction issued in the consolidated action. Since Bard was not a party to that action, Bard's employees need the Memorandum and Judgment...