Free Answering Brief in Opposition - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
VOITH PAPER GMBH & CO. KG, } ) Plaintiff ) )
V.

C.A. No. 07-226-JJF } }

JOI-INSONFOILS, INC., Defendant.

PLAINTIFF VOITH PAPER GMBH & CO. KG'S ANSWERING BRIEF IN OPPOSITION TO

JOHNSONFOILS' MOTION TO COMPEL PRODUCTION OF DOCUMENTS IN RESPONSE TO ITS FIRST SET OF DOCUMENT RE, QUESTS

Adam W. Poff (#3 ) 990) Chad S . C. Stover (#4919) YOUNG CONWAY STARGATT & TAYLOR, LLP The Brandywine Building 1000 West Street, 17th Floor Wilmington, Delaware 19899 (302) 571-6642 Neil F. Greenblum Michael J. Fink Neal Goldberg

GREENBLUM & BERNSTEIN, P.L.C. 1950 Roland Clarke Place
Reston , Virginia 20191 (703) 716-1191 Attorneys for Plaintiff Voith Paper GmbH & Co. KG

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TABLE OF CONTENTS
paeTABLE OF AUTHORITIES ......................... ....................... ......................................... ... i NATURE AND STAGE OF THE PROCEEDING ......................................................... 2 STATEMENT OF FACTS .............................................................................................. 4
A. B. C. The Parties ' Allegations ...........................................................................4 Voith ' s Highly Confidential Information ................................................ 4 Measures Taken to Maintain the Confidentiality of Voith ' s CBI .......................................................................................... 5 JohnsonFoils Is A Direct Competitor of Voith With Respect to Subject Matter Relevant to This Action ................................................................6 The Disclosure of Voith CBI to Individuals Involved in Competitive Business Practices Would Likely Harm Voith ...................7 1. There are numerous potential improper uses of

D.

E.

Voith' s CBI ..................................................................................7
2. Voith's greater investment in its CBI makes it likely that JohnsonFoils would unfairly benefit from a disclosure of Voith' s CBI to individuals involved in competitive business for or on behalf of JohnsonFoils ................7 There is a high likelihood that Voith's CBI will be improperly used if disclosed to individuals involved in competitive business practices .................................................8

3.

F. G.

Voith's Efforts to Negotiate an Agreed Protective Order ........................9 Voith' s Production of Documents Responsive to JohnsonFoils ' Document Requests ........................................................15 Voith produced the documents now the subject of JohnsonFoils Motion to Compel only to have them returned .............................................................................15 2. Voith promptly filed its Motion for a Protective Order within days of the parties' impasse on a negotiated Agreed Protective Order ...........................................16

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3.

Voith has produced documents which are not subject to Voith' s co-pending Motion for a Protective Order ......................................................................... 16

SUMMARY OF ARGUMENT .....................................................................................17 ARGUMENT ................................................................................................................. 18 1. VOITH HAS REASONABLY WITHHELD DOCUMENTS PENDING RESOLUTION OF THE PARTIES' PROTECTIVE ORDER DISPUTE .............................................................................................20
A. JohnsonFoils' Status as a Direct Competitor of Voith in the Wet-End Rebuild Market Poses an Unacceptable Risk that Voith's CBI Would be Improperly Disclosed or Used ...................21 The Disclosure of Voith's CBI is Reasonably Limited to Individuals Who Are Not Involved in Competitive Business Practices on Behalf of JohnsonFoils ......................................................22 A Bar on Patent Prosecution Activities on Behalf of Voith's Competitors is a Reasonable Constraint on Individuals Provided Access to Voith's CBI ...........................................................................24

B.

C.

lI.

JOHNSONFOILS' MOTION TO COMPEL RESPONSES TO ITS REQUEST NOS. 1-12, AND 14 SHOULD BE DENIED ...................26
A. Voith Has Consistently Sought to Promptly Produce Documents Subject to Reasonable Restraints on the Disclosure of Voith' s Highly Confidential Information ...,.,.. ......:...:::..:..27 1. Voith produced the documents now the subject of JohnsonFoils ' Motion to Compel only to have them returned .............................................................................27 Voith promptly filed its Motion for a Protective Order within days of the parties' impasse on a negotiated Agreed Protective Order ........:::::,.. .............. . . . Pending resolution of Voith's co-pending Motion for a Protective Order, Voith continues to identify and produce responsive documents ...........................................29

2.

3.

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B.

JohnsonFoils' Failure to Either Rebut Voith's Objections or Clarify Its Document Requests to Overcome Voith's Objections Renders Them Unfit Subject Matter for a Motion to Compel ..................................................................................29 JOHNSONFOILS' REQUEST NO. 13 IS EITHER FATALLY DUPLICATIVE OF REQUEST NO. 12 OR REQUESTS DOCUMENTS THAT ARE

III.

IRRELEVANT TO ANY ISSUE IN THIS ACTION ...........................32
A. JohnsonFoils ' Characterization of Request No. 13, Disclosed For the First Time In Its Motion to Compel, Renders Request No. 13 Fatally Duplicative of JohnsonFoils ' Request No . 12 ...............................................................32 JohnsonFoils' Failure to Respond to Voith 's Objections to Request No. 13 Renders the Request Unfit for Incorporation in an Order Compelling Voith's Response ., ................... 35 Prior to Filing Its Motion To Compel , JohnsonFoils Refused to Clarify Its Objection to Voith' s Response that Documents Sought by Request No. 13Were Irrelevant ..................36

B.

C.

IV.

CONCLUSION ..................................................................................................37

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TABLE OF AUTHORITIES
Pages

CASES Af fyinetr·ix, Inc, v. Rhanina, Inc., 2005 U.S. Dist. LEXIS 15482 (D. Del., July 28, 2005).......................

.................. 23,25 23,

American Standard Inc. v. Pfizer, Inc., 198 F.2d 734 (Fed . Cir. 1987 )......---------------------------------------- -----------------------------------------------22 Brown Bag Sofm, are v. Symantec Corp.,

960 F.2d 1465 (9t1i Cir. 1992)--------------Carpenter Tech. Corp. V. Armco, Inc., 132 F.R.D. 24 (E.D. Pa.. 1990)-- ---------- ---------- ------------------------------------------- -----Coca-Cola Bottling Co. of Shrevepr·t, Inc. v. Coca-Cola Co.,

... 21, 22, 24

??^ 23

107 F.R.D. 288 (D. Del. 1985) ................... ....

.......... ................ ..22

F.T.C. v. Exxon Corp., 636 F.2d 1336 (D.C. Cir. 1980)---------------------------------·............ ..---------------- ............. ------.......... 24 Intel Corp. v. VIA Tech. Iiic., 198 F.R.D. 525 (N.D. Cal. 2000) .......... ........ ............................................... ._.............. --·22, 23 Interactive Coupon Mktg. Group, Inc. v. H.O.T.! Coupons, LLC.,

No. 98 C 7408, 1999 WL 618969 (N.D. Ill. Aug 9, 1999)--------------------------------------------------?5
Mikohnr Gaining Coip. v. Acres Gaininglnc.,

1998 WL 1059557, 50 U.S.P.Q. 2d 1783 (D. Nev. 1998).. ...........
Motorola, Inc. v. Interdigital Tech. Corp.,

.................. .....?5 -_. 25

1994 U.S. Dist. LEXIS 20174 (D. Del. 1994)-------------------------------------------Neoteric Cosmetics, Inc. v. Beiersdoif, Inc.,

21,22 35 F.Supp .2d 370 (D. Del. 1998 )-------------------------------------------------------------------------------------21,
R.R. Donnelley & Sons Co. v. Quark, Inc.,

No. CIVA 06-032 JJF (D. Del. 2007)................ ____ ........ --................... . i

--...21, 23

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Safe Flight Instrument Corp. v. Sundstrand Data Control, Inc., 682 F.Supp. 20 (D. Del. 1998)-----------------------------------------------United States Steel Corp. v. United States, 730 R2d 1465 (Fed. Cir. 1984). ......................... Virginia Panel Cotp. v. MAC Panel Co., --------....-?1

..21, 23, 24

133 F.3d 860, 869 (Fed. Cir. 1997)......... ·------------Wanlass v. Getz. Elec. Co., ] 48 F.3d 1334, 1337 (Fed. Cir. 1998) ..

34

STATUTES AND RULES

Eames
passim ...--------------··--....__._......_ 4,5 ....4, 13 7

D. Del. Local Rule 26.2 35 U.S.C. § 103----------------Fed. R. Civ. P. 7.1

Fed. R. Civ. P. 16(b)

Fed. R. Civ. P. 26 (c).................. .........................·-------------------------.....------------...------------------.....-..----·4, 26 35 U.S.C. §271(b) ........ ---------------------------------------------..----- 34 35 U.S .C. §271( c).. .................···-·-...----...··------····------------...-------·-··-----........._............................ 34

ii

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Plaintiff Voith Paper GmbH & Co. KG (Hereinafter referred to as "Plaintiff' or "Voith") by and through its attorneys hereby opposes JohnsonFoils' Motion to Compel Production of Documents in Response to Its First Set of Document Requests ("Motion to Compel"). Any purported delay in the production of Voith's documents is the direct result of JohnsonFoils' refusal to negotiate an agreed protective order that addresses Voith's reasonable concern that Voith's highly confidential information not be disclosed to individuals engaged in competitive business practices for or on behalf of JohnsonFoiIs. JohnsonFoils admits as much by expressly predicating its Motion to Compel on Voith's purported failure to move for a Protective Order, even though Voith filed its Motion for a Protective Order, D. 1. 52, within days of JohnsonFoils' declaration of an impasse in the parties' protective order negotiations. JohnsonFoils' Motion to Compel does not even raise the merits of the parties' pending protective order dispute. As explained in detail below, Voith's repeated attempts to produce documents have been frustrated by JohnsonFoils' refusal to address Voith's reasonable concerns regarding the disclosure of Voith's highly confidential documents. Indeed, Voith delivered documents responsive to the discovery requests at issue in JohnsonFoils' Motion to Compel over two months ago, only to have there returned.
JolinsonFoils' sole remaining ground for compelling Voith's response---Voith's statement that it would not produce documents to response to JohnsonFoils' Request No. 13---fails because JohnsonFoils' only asserted basis for the relevance of its Request No. 13 renders it fatally duplicative of its Request No. 12. As such, the only basis for JohnsonFoils' Motion to Compel as to Request No. 13 reduces to JohnsonFoils' basis for compelling a response to its Request No. 12, and is similarly mooted by Voith's pending Motion for a Protective Order.

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JohnsonFoils ' Motion to Compel should also be denied because of JohnsonFoils ' failure to respond to Voith' s timely objections to its discovery requests renders its requests unlit for incorporation in an order compelling Voith ' s response . Prior to filing its Motion to Compel, Voith provided JohnsonFoils with detailed and timely objections and repeatedly invited JohnsonFoils, without success , to clarify the scope of its requests.

NATURE AND STAGE OF PROCEEDINGS
This is a patent infringement action. The Complaint was filed by Voith on April 27, 2007, against Defendant JohnsonFoils. See Complaint, W. 1. After requesting and obtaining several unopposed extensions of time, JohnsonFoils filed its answer, affirmative defenses, and counterclaims , on August 16, 2007. See "Defendant, JohnsonFoils , Inc.'s Answer, Affirmative Defenses , and Counterclaims to Plaintiff, Voith Paper GmbH & Co. KG's Complaint," (JohnsonFoils 's "Answer, Defenses, and CounterClaims ") D.I. 19. Voith replied to the Counterclaims on September 5, 2007. See "Voith's Answer to Defendant ' s CounterClaims," D.I. 31. On August 1, 2007, a scheduling conference pursuant to Fed. R. Civ. P. 16(b) was held. A Scheduling Order was entered on August 3, 2007, ordering that the "[e]xchange and completion of contention interrogatories, identification of fact witnesses and document production shall be commenced so as to be completed by February 15, 2008." Rule 16(b) Scheduling Order, " Scheduling Order," D.I. 17. On August 16, 2007, JohnsonFoils served seven ( 7) deposition notices before written discovery had even begun . JohnsonFoils filed a "Motion for Summary Judgment That U.S. Patents 5,718,805 and 5,972,168 are Invalid," on August 22, 2007. D.T. 25. JohnsonFoils

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withdrew that motion on August 24, 2007. See JohnsonFoils's Notice of Motion to Withdraw its Motion for Summary Judgment, dated August 24, 2007, D.I. 25. JohnsonFoils filed its "Defendant's Motion to Stay the Proceedings Pending Reexamination of the Patents in Suit or in the Alternative For Leave to File a Motion for Summary Judgment Prior to August 20, 2008 That U.S. Patents 5,718,805 and 5, 972,158 are Invalid" on August 28, 2007. D.I. 28. Voith filed its response "Plaintiff Voith Paper GmbH & Co. KG's Response To Defendant's Motion to Stay the Proceedings Pending Reexamination of the Patents in Suit or in the Alternative For Leave to File a Motion for Summary Judgment Prior to August 20, 2008 That U.S. Patents 5,718,805 and 5, 972,158 are Invalid" on September 17, 2007. D.I. 33. JohnsonFoi15' Motion is currently pending and no hearing date has been set. Both parties have served discovery requests and their respective objections and responses to discovery requests. Voith filed its "Motion to Compel Defendant JohnsonFoils, Inc. to Provide Information Requested in Voith's First and Second Sets of Interrogatories and to Produce Documents Responsive to Voith`s First and Second Requests for Documents" on November 9, 2007. D.I.43 ("Voith's Motion to Compel"). JohnsonFoils' "Opposition to [Voith's Motion to Compel]" was filed on November 28, 2007. D.I. 45. Voith filed its "Reply to JohnsonFoils' Opposition to Voith's Motion to Compel" on December 3, 2007, D.I. 48. The Court issued an Oral Order on December 5, 2007, cancelling the scheduled December 7 Motion Day hearing and stating that the Court would rule based on the parties' written submission. JohnsonFoils filed its Motion to Compel Responses to Defendant's First Set of Requests for Production of Documents {"Motion to Compel") on December 17, 2007.

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Voith filed its "Motion for a Protective Order Pursuant to Federal Rules of Civil Procedure 26(c) Prohibiting the Disclosure of Voith's Highly Confidential Information to Individuals Engaged in Competitive Business Practices for or on Behalf of Voith's Competitor JohnsonFoils, Inc." (Voith's "Motion for Protective Order") on December 18, 2007. D.I. 52 (Motion for Protective Order); D.I. 53 (supporting brief). The parties' have filed a stipulation that Voith's response to this Motion to Compel, and JohnsonFoils' response to Voith's Motion for a Protective Order are due January 9, 2008. D.I.

56.
STATEMENT OF FACTS A. The Parties' Allegations

Voith's Complaint alleges that JohnsonFoils has and continues to infringe Voith's '805 patent and Voith's ' 168 patent, (the "Patents-in-Suit"), both entitled Twin Wire Former, and relating to paper forming machines. See Complaint, ^j1( 14-26, D.I. 1. JohnsonFoils' Answer and Counterclaims purports to dispute Voith's infringement allegations. See JohnsonFoils' Answer and Counterclaims; Second Affirmative Defense, D.I. 19. JohnsonFoils' Answer and Counterclaims further purports to allege, inter cilia, that the Patentsin-Suit are invalid under 35 U.S.C. § 103. See id., Third Affirmative Defense; id., Second Counterclaim, B. 19. Voith ' s Highly Confidential Information

As part of its response to JohnsonFoils' requests for documents, Voith has collected documents for production that contain Voith's confidential business information ("Voith's

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CBI"). Declaration of,

1, Exh. 1.1 For example , JohnsonFoils has requested documents

"establishing Voith's alleged investment, (sales, costs , profits, and revenue] associated with the subject matter of the Patents -in-Suit." Id.; Defendant JohnsonFoils, Inc.'s First Set of Requests for Documents and Things to Plaintiff, Request Nos . 3-7, Exh. 2. JohnsonFoils further requests ::applicant" documents relating to the Patents -in-Suit , i ncluding document files, design documents, installation documents , and manufacturing documents . See id., Request Nos. 8-9, 11. In addition to its relevance to JohnsonFoils ' discovery requests , Voith' s CBI is also relevant to Voith' s defenses to JohnsonFoils' purported Counterclaim allegation that the Patents -in-Suit are invalid pursuant to 35 U.S.C. § 103. JohnsonFoils' Answer and Counterclaims, Third Affirmative Defense; id., Second Counterclaim, 1119, Voith's CBI includes both technical information and general business information. Declaration of Kurt F. Brandauer, l 3). For example , Voit 's CBI includes technical information relating to the research , development , manufacturing, and testing of Voith' s paper formers, their components , and their accessories . Id. Among other things, Voith's CBI includes trade secrets and know-how which have neither been publicly disclosed nor disclosed as part of any pending patent application . Id. Voith' s CBI also includes information relating to Voith's costs, investments , revenues, profits, marketing, exportation , importation , distribution, sale, and licensing of Voith's paper formers, their components , and their accessories. Id. C. Measures Taken to Maintain the Confidentiality of Voith's CBI

Voith takes numerous measures to protect its CBI. Declaration of Kurt F. Brandauer, lJ 2. First, Voith's CBI is only disclosed to individuals who are under an obligation to maintain its I

The characterizations of JohnsonFoils ' requests for production are provided for the purpose of demonstrating JohnsonFoils' apparent intent to obtain Voith's CBI , without in any way waiving or deviating from the objections and responses to JohnsonFoils ' discovery requests as fully set forth in Voith ' s Objections and Responses.

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confidentiality . Id. Moreover, all employees of Voith are required, as a condition of their employment , to agree not to disclose any Voith CBI to any unauthorized individuals. Id. To the limited extent that Voith discloses its CBI to third parties, such third parties are required to maintain the confidentiality of Voith's CBI. IcI. Voith has invested in technical and physical measures to protect the confidentiality of its CBI, including encryption and secure servers, as well as conventional physical security , including security personnel responsible for ensuring compliance with Voith's CBI security measures. Id. D. JohnsonFoils Is a Direct Competitor of Voith With Respect to Subject Matter Relevant to This Action

JohnsonFoils, and its parent company AstenJohnson, Inc. (collectively, "JohnsonFoils"), are direct competitors of Voitll in the paper forming machine rebuild market. Declaration of Kurt F. Brandauer, ^ 4. JohnsonFoils has made competing bids on "wet end" paper former rebuilds. Id. Such " wet end" rebuilds are directly related to the subject matter of this action. Id. JohnsonFoils ' requests for documents include at least some Voith CBI directly related to the competitive technical and business aspects of the "wet end" of paper forming machines. Id. In addition to competing with Voith on "wet end" paper former rebuilds, JohnsonFoils also competes with Voith for intellectual property on paper forming machines. For example, United States Patent Application Publication No. 2007/0267164 (" the '164 Application"), entitled "Headbox and Stock Delivery System for a Papermaking Machine" is assigned to JohnsonFoils' parent company AstenJohnson , Inc. See United States Patent Application Publication No. 2007/0267164, Exh . 3. The correspondence address for the 1164 Application is listed as "Volpe and Koenig , P.C.," JohnsonFoils ' counsel of record in the current action. Id. Moreover, JohnsonFoils ' lead attorney in this case, Randolph J. Huis, Esq ., filed a substantive

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paper in the prosecution of the ' 164 Application as recently as December 13, 2007. See Supplemental Information Disclosure Statement, Exh. 4; Pacer, Record Attorneys, Exh. 5. E. The Disclosure of Voith's CBI to Individuals Involved in Competitive Business Practices Would Likely Harm Voith 1. There are numerous potential improper uses of Voith's CBI,

The disclosure of Voith's CBI to its competitors, or the disclosure of Voith's CBI to individuals engaged in competitive activities on behalf of Voith's competitors, including Voith's direct competitor JohnsonFoils, would likely be highly prejudicial to Voith. See Declaration of Kurt F. Brandauer, 4115. The disclosure of Voith's technical C131 to a competitor would harm Voith because accurate information about Voith's technical and business activities at least provides an informed competitor with the ability to 1) focus its pending patent applications on excluding Voith's specific technology from the marketplace, 2) optimally adjust its competitive bids and marketing based on information about Voith's bids, marketing, costs, and revenues, and 3) unfairly benefit from the results of Voith's research by directing its research efforts to either building on Voith's research results or avoiding the expense of duplicating Voith's research results. Id. 2. Voith's greater i nvestment in its CBI m akes it likely that JohnsonFoils would unfairly benefit from a disclosure of Voith's CBI to individuals involved in competitive business practices for or on behalf of JohnsonFoils.

Jol-insonFoils has entered into direct competition with Voith only recently, within the last 4 years. See Declaration of Kurt F. Brandauer, 6. Voith's investment in creating the CBI requested by JohnsonFoils, extending over decades, likely vastly exceeds JohnsonFoils' investment in creating its CBI. Voith's CBI, if disclosed to individuals involved in competitive

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activities for or on behalf of JohnsonFoils, would confer a substantial and undeserved benefit on JohnsonFoils, to Voith's detriment. Id. 3. There is a high likelihood that Voith's CBI will be improperly used if disclosed to individuals involved in competitive business practices.

Because JohnsonFoils is a direct competitor of Voith, it would be difficult, if not impossible, for someone engaged in preparing the claims of a competitive patent application, a patent continuation, or a patent reissue, to avoid being influenced by their exposure to Voith's CBI. Declaration of Kurt F. Brandauer, 7. As part of their routine practice, patent prosecutors

specifically target their competitor's present and potential future products and services. Id. Exposure to Voith's CBI would prejudice Voith by eliminating the guesswork associated with that practice, even on the part of a prosecutor having the best intentions to respect limitations on the improper use of Voith's CBI. Id. Although Voith would prefer not to disclose its CBI to any attorney involved in competitive patent prosecution, imposing a limit on competitive prosecution activities of three (3) years would reasonably protect Voith in two ways. Id. First, the three (3) year bar would provide Voith with a fair opportunity to seek prior protection for any Voith CBI disclosed in the JohnsonFoils Litigation. Id. Second, the three (3) year bar would limit the impact of the disclosure by rendering the CBI less current. Id. In addition, it would be difficult, if not impossible, for counsel involved in other forms of competitive decision making, such as business planning, marketing, and bidding decisions, to avoid being influenced by exposure to Voith's C131, to Voith's detriment. Declaration of Kurt F. Brandauer, ^ 8. As part of the routine consideration of business plans, marketing, sales, and competitive bidding, individuals involved in such business decisions consider the potential activities of competitors. Id. Also, a company's decision whether to award a contract to Voith or to one of Voith's competitors depends on comparing competing bids and services. Id.

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Disclosing Voith's CBI to individuals involved in competition with Voith would likely eliminate the guesswork associated with predicting the nature and scope of expected competition from Voith, and unfairly benefit JohnsonFoils , to Voith' s detriment. Id. F. Voith's Efforts to Negotiate an Agreed Protective Order

Voith informed JohnsonFoils on September 21, 2007, that its proposed protective order would permit two levels of confidentiality - Highly Confidential and Confidential . See Letter from Michael J . Fink to Anthony S. Volpe, dated September 21, 2007, Exh. 6. Voith explained that Highly Confidential i nformation would be limited to litigation counsel and qualified experts.

Id.
During the party's telephone conference relating to discovery issues held on October 24, Voith reiterated that it would be producing documents in accordance with these confidentiality designations . Voith also reiterated its request that JohnsonFoils produce document pursuant to this Court's Local Rule 26 . 2. In response, JohnsonFoils informed Voith, for the first time, that it would not respect Voith's confidentiality designations prior to entry of an agreed protective order. See Letter from Anthony S. Volpe to Neal Goldberg, dated October 24, 2007, Exh. 7. JohnsonFoils provided no reason for rejecting Voith ' s confidentiality designations, and said nothing about a potential conflict resulting from JohnsonFoils' trial counsel's involvement in competitive prosecution activities. Id. JohnsonFoils also refused to produce any documents prior to entry of an agreed protective order. Id. Voith provided JohnsonFoils with a detailed proposed protective order which included the two levels of confidentiality, Confidential and Highly Confidential, originally disclosed to JohnsonFoils on September 21, 2007. See Voith's Proposed Protective Order, Exh . 8. Voith's Proposed Protective Order li mits disclosure of a party's confidential information to individuals

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riot involved in competitive activities, such as competitive patent prosecution and competitive product development on the subject matter of the Patents-in-Suit. Id., ¶11 6-8. On November 2, JohnsonFoils stated that it was in the process of reviewing Voith's Proposed Protective Order, and further assured Voith that it would provide comments and revisions. See Email from

Anthony S. Volpe to Neal Goldberg, dated November 2, 2007, Exh. 9.
Having received no response from JohnsonFoils on Voith's Proposed Protective Order, Voith delivered its initial production of responsive documents to JohnsonFoils on November 7, 2007, specifying that documents designated Highly Confidential could only be disclosed to counsel of record who accept Voith's proposed limits on patent prosecution activities relating to the subject matter of the Patents-in-Suit. See Letter from Neal Goldberg to Anthony S. Volpe, dated November 7, 2007, Exh. 10. Without any prior conferral with Voith, JohnsonFoils returned Voith's documents. See Letter from Anthony S. Volpe to Neal Goldberg, dated November 8, 2007, Exh. 11. In refusing to accept Voith's documents, JohnsonFoils did not provide any explanation for rejecting Voith's proposed limitation on patent prosecution for individuals viewing Voith's Highly Confidential documents. Id. JohnsonFoils' sole stated basis for returning Voith's documents was that Voith's proposed limit on prosecution constituted a :`unilateral demand." Id. JohnsonFoils subsequently rejected Voith's Proposed Protective Order in its entirety. See Letter from Anthony S. Volpe to Michael J. Fink, dated 9;55 a.m., November 16, 2007, Exh. 12. In rejecting Voith's Proposed Protective Order, JohnsonFoils did not identify any particular disagreement with any particular provision. Id. Instead of providing the promised comments and revisions on Voith's Proposed Protective Order, JohnsonFoils provided its own draft protective order. See Email from Anthony S. Volpe to Michael J. Fink, dated 4:55 p.m.,

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November 16, 2007, Exh. 13; JohnsonFoils' Draft Protective Order, Exh. 14. As of November 16, 2007, JohnsonFoils' only stated criticism of Voith's Proposed Protective Order was that Voith's proposal was "unworkable." See Letter frorn Anthony S. Volpe to Michael J. Fink, dated 9:55 a.m., November 16, 2007 ("[W]e found you (sic) proposal unworkable and set about preparing our own draft ..."). JohnsonFoils Draft Protective Order provides for only one confidentiality designation: "Attorneys Eyes Only." See JohnsonFoils' Draft Protective Order, 1. Although nominally

designated "Attorneys Eyes Only," JohnsonFoils' Draft Protective Order allows documents so designated to be disclosed to a non-attorney "party representative." Id., ¶ 5. JohnsonFoils' Draft Protective Order further provides for the disclosure of documents designated "Attorneys Eyes Only" to a party's in-house counsel. Id. JohnsonFoils' Draft Protective Order places no limit on the disclosure of confidential documents to in-house counsel, party representatives, or counsel of record, involved in competitive activities for, or on behalf of, JohnsonFoils, except for the general proscription against using Voith's confidential information for purposes other than the instant litigation. Id., 2. Similar to Voith's Proposed Protective Order, JohnsonFoils' Draft

Protective Order is an "umbrella protective order" which provides that the producing party chooses the confidentiality designation of its own documents and information in the first instance. See id., 11 3. After a review of JohnsonFoils' Draft Protective Order, Voith invited JohnsonFoils to participate in a conference call to "narrow the points in dispute" between the parties' respective protective order proposals. See Email from Michael J. Fink to Anthony S. Volpe, dated November 18, 2007, Exh. 15. JohnsonFoils ignored Voith's invitation to confer, instead stating that Voith's Proposed Protective Order "goes well beyond anything necessary for [the

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technology at issue]...." See Email from Anthony S. Volpe to Michael J. Fink, dated November 19, 2007, Exh. 16. In response, Voith explained in detail its basis for concluding that JohnsonFoils' Draft Protective Order would result in unnecessary risks that Voith's confidential information would be improperly used by individuals involved in competitive business activities, such as patent prosecution or competitive bidding, against Voith. See Email from Michael J. Fink to Anthony S. Volpe, dated November 20, 2007, Exh. 17. In response, JohnsonFoils stated that "[t]here is little, if any, reason for [Voith's] broad exclusion of any attorney who sees Voith's information from prosecuting patents. The subject matter has long been public and there is little, if any, information to be produced that related to current prosecution of subject matter in patents that are near to expiration." See Email from Anthony S. Volpe to Michael J. Fink, dated November 21, 2007, Exh. 18. JohnsonFoils further stated that "[JohnsonFoils'] in-house general counsel is not a technical person and is not a patent prosecutor," but did not disclose that JohnsonFoils' trial counsel are engaged in competitive patent prosecution. Icy. Voith responded to JohnsonFoils' contention that no highly confidential information exists relating to the Patents-in-Suit by explaining that documents disclosing the incorporation of the claimed invention in present-day paper forming machines would contain sensitive proprietary information. See Email from Neal Goldberg to Anthony S. Volpe, dated November 21, 2007, Exh. 19. JohnsonFoils responded that "JohnsonFoils does not accept that there is highly sensitive information simply because [Voith] say[s] there may be such information...." See Email from Anthony S. Volpe to Neal Goldberg, dated November 26, 2007, Exh. 20. JohnsonFoils added that disclosing Voith's Highly Confidential information to an in-house JohnsonFoils non-legal representative "is a risk that Voith understood when [Voith] asserted the

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patents." Id. JohnsonFoils further directed Voith to seek a protective order from the Court. See id; Email from Anthony S. Volpe to Michael J. Fink, dated November 21, 2007. For the first time, in its Opposition to Voith's Motion to Compel filed November 28, JohnsonFoils disclosed that a limit on competitive prosecution activities "could potentially exclude JohnsonFoils' litigation counsel from reviewing [Voith's] `Confidential' or 'Highly Confidential' information." See Defendant's Answering Brief in Opposition to Plaintiffs Motion to Compel, D.Y. 46, at p. 2, fh. 1. JohnsonFoils did not identify any particular litigation counsel who "could potentially" be excluded. Id. Nor did JohnsonFoils identify the basis for the potential exclusion. Id. Prior to November 28, 2007, JohnsonFoils only stated basis for its failure to respond to Voith's discovery requests was the lack of an agreed protective order. Id., passim. The following day, on November 29, 2007, nearly seven months after its first appearance on May 4, 2007, D.l. 5, JohnsonFoils filed its Disclosure Statement pursuant to Rule 7.1, disclosing that AstenJohnson, Inc. is the corporate parent of JohnsonFoils. D.I.47. In a further effort to move discovery forward, Voith then asked JohnsonFoils to agree to a temporary interim modification of Rule 26.2 which would permit Voith to limit the disclosure of Voith's Highly Confidential documents to those of JohnsonFoils' litigation counsel not engaged in competitive business practices, including patent prosecution, until the parties' pending protective order dispute was resolved by the Court. See Email from Michael J. Fink to Anthony S. Volpe, dated November 30, Exh. 21. JohnsonFoils refused. See Email from Anthony S. Volpe to Michael J. Fink, dated December 2, 2007, Exh. 22. Responding to JohnsonFoils' reliance on the parties' protective order dispute to defend its failure to respond to discovery requests in JohnsonFoils' Opposition to Voith's Motion to Compel, Voith requested that this Court enter a temporary protective order, pending resolution of

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the parties' dispute, limiting the disclosure of Highly Confidential documents to litigation counsel subject to a prosecution bar on the subject matter of the Patents-in-Suit. See Reply to JohnsonFolls' Opposition to Voith's Motion to Compel, at 11-12. D.I. 48. A month after returning Voith's documents, on Friday, December 7, JohnsonFoils sent a fax to Voith purporting to object to Voith's discovery responses and reiterating JohnsonFoils' refusal to agree to any prosecution limitation on JohnsonFoils' counsel provided access to Voith's Highly Confidential documents under Rule 26.2. See Fax from Anthony S. Volpe to Neil F. Greenblum and Michael J. Fink, dated December 7, 2007, Exh. 23. On Monday, December 10, Voitll provided a detailed response to the discovery issues raised in JohnsonFoils' Letter, and referred JohnsonFoils to Voith's pending request to this Court for a temporary modification of Rule 26.2 to prohibit the disclosure of Highly Confidential or Attorneys' Eyes Only documents to individuals involved in patent prosecution on the subject matter of the Patents-in-Suit pending resolution of the parties' protective order dispute. See Letter from Neal Goldberg to Anthony S. Volpe, dated December 10, 2007, Exh. 24. In advance of the parties' scheduled conference call to discuss pending discovery disputes, Voith asked JohnsonFoils to identify those of its litigation counsel involved in patent prosecution in the subject hatter of the Patents-in-Suit. See Email from Michael J. Fink to Anthony S. Volpe, dated December 12, 2007, Exh. 25. In that letter, Voith explained the benefits of agreeing to a temporary limit on prosecution activities: This proposal would allow JohnsonFoils to obtain access to Voith's documents immediately, subject only to a limit on prosecution that would be subject to Court approval. Such a temporary limit would impose no restraint on JohnsonFoils litigation counsel not presently, or for some time in the future, prosecuting patents in the subject matter of the Patents-in-Suit. Moreover, Voith's proposal would impose no substantial restraint on any JohnsonFoils litigation counsel if the Court ultimately rejects Voith's proposed prosecution bar.

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Voith then initiated a telephone conference with JohnsonFoils, on December 13, 2007, to discuss the parties' pending discovery disputes. See Declaration of Neal Goldberg, 2, Exh. 26.

The participants at the telephone conference included Voith's counsel, Michael J. Fink and Neal Goldberg, and JohnsonFoils' counsel, Anthony S. Volpe and John O'Mally. Id. During this telephone conference, JohnsonFoils stated that it would not identify any litigation counsel engaged in prosecution activities on behalf of JohnsonFoils or AstenJohnson. Id., 4.

JohnsonFoils also refused Voith's offer to provide its Highly Confidential documents to a designated JohnsonFoils counsel of record, including local Delaware counsel, not involved in prosecution or other competitive business activities on behalf of JohnsonFoils, pending the Court's resolution of the parties' protective order dispute. Id., 1,1 5. JohnsonFoils acknowledged that the Court might impose a prosecution bar if Voith satisfied the Court that its document production included documents meriting such protection, but refused to agree to Voith's proposed compromise temporary prosecution bar contingent on Court approval. Id., 16, On Friday, December 14, 2007, the parties continued to confer regarding Voith's offer to deliver its Highly Confidential documents to JohnsonFoils' counsel-of-record not involved in competitive business activities for or on behalf of JohnsonFoils pending resolution of the parties' protective order dispute. See Email from George H. Seitz to Adam W. Poff, dated December 14, 2007, Exh. 2S. G. Voith 's Production of Documents Responsive to JohnsonFoils ' Document Requests 1. Voith produced the documents now the subject of JohnsonFoils Motion to Compel only to have there returned.

After providing JohnsonFoils with a Proposed Protective Order, Voith promptly delivered documents responsive to JohnsonFoils' document requests on November 7. 2007, See

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Letter from Neal Goldberg to Anthony S. Volpe, dated November 7, 2007. Voith's documents were provided subject to the limitation that they could only be disclosed under terms consistent with Voith's Proposed Protective Order. Icy. JohnsonFoils returned the documents to Voith without providing any counter-proposal to Voith's proposed limitations on the disclosure of Voith's Highly Confidential Information, See Letter from Anthony S. Volpe to Neal Goldberg, dated November 8, 2007. 2. Voith promptly filed its Motion for a Protective Order within days of the parties' impasse on a negotiated Agreed Protective Order.

After over a month of negotiations relating to the terms of an Agreed Protective Order, JohnsonFoils first stated that "it appears that the [the parties'] are at an impasse" on Friday, December 7, 2007, and demanded a response by Tuesday, December 11, 2007. See Letter from Anthony S. Volpe to Neil F. Greenblum, dated December 7, 2007. Voith responded in detail on December 10, 2007. See Letter from Neal Goldberg to Anthony S. Volpe, dated December 10, 2007. The parties' conferred by telephone conference on December 13, 2007, but did not reach agreement. Sc'e Declaration of Neal Goldberg, 11112-7. On Friday, December 14, 2007, the parties continued to confer regarding Voith's offer to deliver its Highly Confidential documents to JohnsonFoils' counsel-of-record not involved in competitive business activities for or on behalf of JohnsonFoils pending resolution of the parties' protective order dispute. See Email from George H. Seitz to Adam W. Poff, dated December 14, 2007, Exh. 27. Voith's Motion for a Protective Order was filed on December 18, 2007. 3. Voith has produced documents that are not subject to Voith's copending Motion for a Protective Order,

Shortly after JohnsonFoils refused to compromise on an Agreed Protective Order, Voith identified and produced responsive documents not subject to Voith's co-pending Motion for a

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Protective Order bearing production numbers i n the range VTH000001 - VTH 29898. See Letter from Neal Goldberg to Tony Volpe, dated December 31, 2007, Exh. 28; Letter from Neal Goldberg to Tony Volpe , dated January 2 , 2008, Exh. 29 ; Letter from Neal Goldberg to Tony Volpe, dated January 4, 2008 , Exh. 30.

SUMMARY OF ARGUMENT
1. Voith reasonably limited the disclosure of its highly confidential documents to

JohnsonFoils pending resolution of the parties ' protective order dispute. 2. JohnsonFoils ' Motion to Compel should be denied with respect to document requests

other than its Request No. 13 because JohnsonFoils' Motion to Compel is mooted by Voith's pending Motion for a Protective Order. JohnsonFoils' Motion to Compel is expressly limited to requiring Voith to either produce documents subject to Del. Local Rule 26.2 or move for a Protective Order. Voith moved for a Protective Order on December 18, 2007, within days of the parties' impasse on efforts to negotiate an Agreed Protective Order. 3. JolnsonFoils ' Motion to Compel with respect to its Request No . 13 should be denied

because 1) as characterized for the first time in JohnsonFoils' Motion to Compel, the only relevant documents responsive to Request No. 13 are also responsive to Request No. 12, to which Voith has already agreed to produce documents pending resolution of the parties' protective order dispute, and 2) JohnsonFoils' has failed to rebut Voith' s objections to Request No. 13. Under JohnsonFoils ' interpretation of its Request No. 13, Request No. 13 is subsumed by its Request No. 12. Therefore, just as with Request No. 12, JohnsonFoils Motion to Compel a response to Request No. 13 is also mooted by Voith' s pending Motion for a Protective Order.

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ARGUMENT JohnsonFoils ' Motion to Compel fails on its own terms because it is predicated on two incorrect assumptions that, once dispelled , are fatal to its requested relief. First, JohnsonFoils asks that Voith be compelled to produce documents in response to its requests because of Voith's purported failure to move for imposition of a protective order. See Motion to Compel, at 7-8 ("Since Voith has not moved for a protective order ... [Voith's documents ] should be produced immediately.") However, Voith moved for a protective order on December 18, 2007, one day after JohnsonFoils filed this Motion to Compel , and within days of the parties ' impasse on the protective order issue . See Voith's Motion for a Protective Order. As late as Friday , December 14, 2007, the parties were conferring on an interim solution that would have enabled Voith to produce highly confidential documents to JohnsonFoils pending resolution of the parties' protective order dispute. See Letter from George H. Seitz to Adam W. Poff, dated December 14, 2007. Significantly , JohnsonFoils ' Motion to Compel does not even contest the merits of Voith's need for a protective order. Indeed , the need for a protective order is this case is compelling in light of JohnsonFoils ' status as a direct competitor and the apparent involvement of JohnsonFoils ' trial counsel in competitive business practices for or on behalf of JohnsonFoils. Thus, Voith ' s promptly filed Motion for a Protective Order decisively moots JohnsonFoils' Motion to Compel with respect to all of its requests other than its Request No. 13, JohnsonFoils ' second incorrect assumption is that Voith has refused to produce relevant documents responsive to JohnsonFoils ' Request No. 13. See Motion to Compel , at pp. 8-9. Setting aside JohnsonFoils ' objected-to re-definitions of the terms of Request No. 13, JohnsonFoils ' Request No . 13 on its face requests documents relating to the potential infringement of third parties. On September 17, 2007, Voith properly objected to this request as

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calling for the production of irrelevant documents. See Plaintiff Voith Paper GmbH & Co. KG's Objections and Responses to Defendant, JohnsonFoils, Inc.'s First Set of Requests for Production of Documents and Things to Plaintiff, served September 17, 2007, (Voith's "Objections and Responses") Exh. 31. JohnsonFoils remained silent about Voith's Objections and Responses for nearly three months, finally objecting on December 7, 2007. See Fax from Anthony S. Volpe to Neil F. Greenblum and Michael J. Fink, dated December 7, 2007. Shortly thereafter, on December 10, 2007, Voith asked JohnsonFoils to explain the relevance of its request, but, during the parties' subsequent telephone conference on December 13, 2007, JohnsonFoils refused. See Letter from Neal Goldberg, to Anthony S. Volpe, dated December 10, 2007; Declaration of Neal Goldberg, ¶ 7. Not until its Motion to Compel did JohnsonFoils provide its "explanation" of the relevance of documents relating to third party infringement, only to, as explained more fully below, render its Request No. 13 fatally duplicative of its Request No. 12, for which Voith has assured JohnsonFoils that responsive documents would be produced. In its Motion to Compel, JohnsonFoils now states that the third party infringement relevant to Request No. 13 relates to Voith's allegations of JohnsonFoils' induced infringement and contributory infringement. JohnsonFoils also now asserts that documents requested by Request No. 13 are relevant to JohnsonFoils' defenses of misuse, laches, and statute of limitations. But JohnsonFoils' Request No. 12 requests all documents relating to JohnsonFoils' infringement and, therefore, includes documents relating to the direct infringement of third parties for whom JohnsonFoils induces infringement or for which JohnsonFoils is liable for contributory infringement. Also, as explained more fully below, documents relating to JohnsonFoils' defenses of misuse, laches and statute of limitations are irrelevant if not also related to JohnsonFoils' own infringement and are

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similarly included within the scope of JohnsonFoils' Request No. 12. Voith reasonably construed JohnsonFoils' Request No. 13 to cover documents not requested by Request No. 12 and properly declined JohnsonFoils' invitation to accept the burden of producing irrelevant matter. Consequently, JohnsonFoils' Motion to Compel with respect to its Request No. 13 should be denied because the documents requested are either irrelevant or subsumed by JohnsonFoils' Request No. 12. On close examination, all of the issues raised by JohnsonFoils' Motion to Compel will be resolved by this Court's resolution of the parties' protective order dispute-the subject of Voith's co-pending Motion for a Protective Order. In fact, Voith delivered the responsive documents sought by this Motion to Compel to JohnsonFoils on November 7, 2007, only to have them returned on account of the parties' protective order dispute. As illustrated by the parties' apparent dispute over Request No. 13, any other alleged deficiencies in Voith's discovery responses have resulted from JohnsonFoils' continuing failure to respond to the merits of Voith's objections to its discovery requests. See Voitlh's Objections and Responses. Moreover, JohnsonFoils' failure to respond to Voith's objections and clarify the scope of its requests renders JohnsonFoils' requests, at least as stated, unfit subject matter for incorporation into an order compelling Voith's response. VOITH HAS REASONABLY WITHHELD DOCUMENTS PENDING RESOLUTION OF THE PARTIES' PROTECTIVE ORDER DISPUTE Apart from objecting to Voith's insistence that its highly confidential documents not be disclosed to individuals involved in competitive business practices for JohnsonFoils, JohnsonFoils' Motion to Compel does not begin to contest the need for such protection. Nor could it, for, as explained more fully below, JohnsonFoils' status as a direct competitor of Voith creates a compelling circumstance for imposing a strict protective order in this case. The fact

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that JohnsonFoils ' counsel-of- record are apparently involved in competitive business practices on behalf of JohnsonFoils more than justifies Voith's decision to move for a protective order rather than rely on the plain language of Del. Local Rule 26.2's Attorneys' Eyes Only restriction. A. JohnsonFoils' Status as a Direct Competitor of Voith in the Wet-End Rebuild Market Poses an Unacceptable Risk that Voith ' s CBI Would be Improperly Disclosed or Used.

For at least four years, JohnsonFoils has directly competed with Voith in the wet-end paper forming machine rebuild market. See Declaration of Kurt F . Brandauer, ¶ 6. In addition, JohnsonFoils competes with Voith for intellectual property in the papermaking machine area. See United States Patent Application Publication No. 200710267164. Both competitive bidding and competitive intellectual property development are activities in which knowledge of a competitor' s confidential information is especially useful. Declaration of Kurt F. Brandauer, 1178. Competitive activities, by definition , always i nclude consideration of a competitors' activities and plans. M. However, because such information i s kept confidential , such considerations involve a considerable amount of speculation . Icl. Having possession of a competitor's confidential information eliminates the usual guesswork associated with such considerations, and substantially increases the risk of obtaining an improper competitive advantage. Id. Because the disclosure of Voith' s CBI to individuals involved in competitive business activities for which Voith's activities and plans are typically targeted would pose an unacceptably high risk of prejudice to Voith , a protective order is warranted to avoid the risk that Voith's confidential information could be inadvertently disclosed or improperly used. See Brown Bag Softi>>are v. Sjwwntec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992); United States Steel Corp. v. United States, 730 F.2d 1465, 1469 (Fed. Cir. 1984); Donnelley, 2007 WL 61885, at * 1; Safe Flight, 682 F. Supp . at 22-23; Neoleric Cosmetics, MC. V, Beiersdoif hic., 35

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F.Supp.2d 370, 372 (D. Del. 1998) (disclosure of confidential pending patent applications limited by terns of suitable protective order). In determining the proper scope of a protective order, "[e]ven a seemingly insignificant risk of disclosure cannot be ignored due to the threat of significant potential injury." Intel Corp. v. VIA Tech., h7c., 198 F.R.D. 525, 531 (N.D. Cal. 2000) (citing Brown Bag, 960 F.2d at 1470). The fact that JohnsonFoils is a competitor justifies imposing a protective order that severely limits JohnsonFoils' to Voith's confidential information. "Courts have presumed that disclosure to a competitor is more harmful than disclosure to a none ompetitor." American Slandard Inc. v. Pfizer, Inc., 828 F.2d 734, 741 (Fed. Cir. 1987) (citing Coca-Cola Bottling Co. of Shreveport, Inc. v. Coca-Cola Co., 107 F.R.D. 288, 293 (D. Del. 1985)). Because of the substantial risk of farm resulting from disclosing confidential information to competitors, courts have recognized that "the irreparable harm that can be suffered by the disclosing party may outweigh the need for disclosure of even highly relevant information to a competitor." Carpenter Tech. Corp. v. Armco, Inc,, 132 F.R.D. 24, 26 (E.D. Pa. 1990) (citing American Standard, 828 F.2d at 741). That highly relevant confidential information may be completel), withheld from a competitor supports imposing restrictions on a JohnsonFoils' access to Voith's CBI sufficient to prevent its disclosure to any individuals involved in competitive activities, including competitive patent prosecution. B. The Disclosure of Voith' s CBI is Reasonably Limited: to Individuals Who Are Not Involved in Competitive Business Practices on Behalf of JohnsonFoils.

Recognizing that the indisputable increased risk that a party will suffer harm from the disclosure of its confidential information to competitors, courts have imposed protective orders limiting disclosure to individuals who are barred from competitive activities, and requiring that the disclosure only be made under circumstances which suitably protect against inadvertent

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disclosure. Access to confidential information is properly denied to individuals who are "in a position that creates a high risk of inadvertent disclosure." Donnelley, 2007 WL 61885 at *I (citing Intel Cap. v. VIA Tech., Inc., 198 F.R.D. 525, 528 (N.D. Ca. 2000)). Denial of access to confidential information should be made "on the basis of each individual counsel's activity and relationship with the party represented, without regard to whether a particular counsel is in-house or retained." U. S. Steel, 730 F.2d at 1469; Carpenter, 132 F.R.D. at 27. "Specifically, the court should consider `whether the attorneys are involved in competitive decision making of the company and should examine the risks and safeguards surrounding the inadvertent disclosure of the protected information.'" Donnelley, 2007 WL 61885 at * I (quoting Aff ,illetrix, Inc. 1'. Illuinincr, Inc., 2005 U.S. Dist. LEXIS 15182, at '16-7 (D. Del., July 28, 2005)). Although the exclusion of a party's counsel is based on the tangible risk that confidential information will be inadvertently or improperly disclosed or used, it is likely that at least Johnsonl~oils' outside prosecution counsel and in-house counsel are involved in disqualifying competitive decisions. As a direct competitor of Voith, JohnsonFoils' marketing, product research, product development, and intellectual property development decisions are likely made in light of available information regarding Voith's activities. See Declaration of Kurt F. Brandauer, T117-8. A party's counsel may be properly denied access to confidential information where that counsel's "activities, association, and relationship with a client ... are such as to involve [that] counsel's adl ice crud participation in any or all of the client's decisions (pricing, product design, etc.) made in light of similar or corresponding information about a competitor." U.S. Steel, 730 F.2d at 1468, n. 3. The risk of harm to Voith from disclosing its CBI to JohnsonFoils' in-house counsel is particularly serious. Courts have recognized that, as a general matter, there is a greater risk in

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disclosing confidential information to a party's in-house counsel because "in-house counsel stand in a unique relationship to the corporation in which they are employed ... Their continued employment often intimately involves them in the management and operation of the corporation of which they are a part." Intel, 198 F.R.D. at 531 (citing F.7.C. v. Exxon Cap., 636 F, 2d 1336, 1350 (D,C. Cir. 1980)). Knowledge of a competitor's trade secrets "places in-house counsel in the 'untenable position' of having to refuse his employer legal advice on a host of. . . competitive ... decisions lest he improperly reveal [the competitor's] trade secrets." Bro3>>n Bag, 960 F.2d at 1471. In light of the difficulty of identifying and assessing the potentially harmful effects of disclosing Voith's CBI to JohnsonFoils' in-house representatives or counsel, coupled with JohnsonFoils' history of concealing the potential conflicts arising from the patent prosecution work of its counsel of record, a protective order which, in the first instance, bars disclosure to such individuals is warranted.'` C. A Bar on Patent Prosecution Activities on Behalf of Voith' s Competitors is a Reasonable Constraint on Individuals Provided Access to Voith's CBI.

JohnsonFoils' ongoing efforts to secure patents in the paper making machine field create a particularly serious risk that Voith's CBI would be inadvertently or improperly disclosed or used if disclosed to any individuals involved in patent prosecution on the subject matter of the Patents-in-Suit. See Declaration of Kurt F. Brandauer, T 7. Courts have recognized that patent prosecution is an intensely competitive activity which creates a serious risk that the confidential information of a competitor will be improperly disclosed or used. See Afb7metrix, Inc. v. 11hunina, Inc., No. Civ. A. 04-901-JJF, 2005 WL 1801683, at *1 (D. Del. July 28, 2005) (patent

2

Such a presumption is consistent with U.S. Steal in light of the fact that JohnsonFoils could, by fully disclosing the competitive activities of individuals proposed to have access to Voith's CBI, overcome the presumption.
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prosecution described as competitive decision making); Interactive Coupon .Mktg. Group, Inc. v. H. O. T! Coupons, LLC, No. 98 C 7408, 1999 WL 618969 (N.D. 111. Aug. 9, 1999) (imposing prosecution bar on counsel exposed to confidential information); Mikohn Gaining Corp. v. Acres Gaining Inc., 1998 WL 1059557, 50 U.S.P.Q. 2d 1783, 1785-86 (D. Nev. 1998) (barring counsel engaged in prosecution from viewing competitor's confidential information, explaining that patent prosecution directed at a competitor is "intensely competitive"); Motorola, 1994 U.S. Dist. LEXIS 20714 at * 11-12 (explaining competitive nature of patent prosecution and imposing a prosecution bar). Moreover, JohnsonFoils' refusal to identify those of its counsel of record engaged in competitive patent prosecution on the subject matter of the Patents-in-Suit while, at the same time, demanding the immediate disclosure of Voith's CBI to those very individuals, casts serious doubt on JohnsonFoils' intent to protect Voith's CBI from inadvertent or improper misuse. As explained above, just as an example, JohnsonFoils' lead counsel of record, Randolph J. Huis, as recently as December 13, 2007, has engaged in the prosecution of patents on behalf of JohnsonFoils in the area of paper making machines. See Supplemental Information Disclosure Statement, Pacer, Record Attorneys. Having concealed the extent of its counsel of record's involvement in competitive patent prosecution activities, JohnsonFoils should not be permitted to rely on those activities to oppose protecting Voith's CBI with a prosecution bar. Although courts consider the hardship to a party resulting from the restrictions imposed by a protective order, such hardship is not undue where a party could have foreseen the restriction based on its counsel's involvement in competitive activities. Motorola, 1994 U.S. Dist. LEXIS 20714 at * 15. To the extent that JohnsonFoils would be inconvenienced by limiting Mr. Huis' access to Voith's CBI, JohnsonFolls could have

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mitigated any harm by disclosing Mr. Huis' activities and addressing the potential conflict earlier. Even at this late date, JohnsonFoils can, under the terms of Voith's Proposed Protective Order, provide full disclosure of Voith's CBI to Mr. Huis by accepting a prosecution bar. Any inconvenience to JohnsonFoils is thus limited to the inconvenience of utilizing alternative patent prosecution counsel. Voith's proposed three (3) year prosecution bar reasonably protects Voith's CBI by providing a buffer period in which Voith can reduce the impact of any inadvertent or improper use. Voith could usefully use this three year period to identify and seek patent protection for its own CBI, thus ensuring that Voith will at least have priority for its intellectual property if it is inadvertently disclosed or used in a JohnsonFoils application. The prejudice of such a bar to JohnsonFoils is either minimal or nonexistent. JohnsonFoils is not prejudiced in its prosecution of this case because its counsel of record can, by agreeing to a prosecution bar, have full disclosure to Voith's CBI. To the extent that JohnsonFoils is inconvenienced in choosing to forego representation by a particular lawyer in patent prosecution matters, the inconvenience is no more than is routinely experienced by clients having to forego the services of a particular lawyer because of a conflict. In any event, such inconvenience is more than justified when balanced against the serious, and difficult to quantify or detect, harm to Voith from tile inadvertent or improper use or disclosure of Voith's CBI. II. JOHNSONFOILS' MOTION TO COMPEL RESPONSES TO ITS REQUEST NOS. 1-12, AND 14 SHOULD BE DENIED JohnsonFoils' sole asserted basis for its Motion to Compel with respect to any of its fourteen (14) documents requests other than Request No. I3 is that Voith had produced responsive documents to JohnsonFoils subject to conditions not stated in Del. Local Rule 26.2 without having moved for a protective order pursuant to Fed. R. Civ. P. 26(c). Johnsonlioils'

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Motion to Compel does not even purport to address the merits of Voith's request for additional protection. Nor does JohnsonFoils address Voith's Objections and Responses to requests Nos. 112, and 14. Therefore, Voith's pending Motion for a Protective Order completely moots JolinsonFoils' Motion to Compel with respect to requests Nos. 1.12 and 14. Not only is the resolution of JohnsonFoils' Motion to Compel unnecessary in view of Voith's pending Motion for a Protective Order, but JohnsonFoils has stated no reason for imposing an order compelling Voith to respond to discovery requests once the parties' protective order dispute is resolved. In view of Voith's repeated attempts to produce documents to JohnsonFoils on terms that reasonably protect Voith's highly confidential information, the need for an order compelling Voith to respond is plainly premature. JohnsonFoils' Motion to Compel is also premature because of JohnsonFoils' repeated failure to respond to Voith's reasonable objections to its discovery requests. As explained below, compelling responses to JohnsonFoils discovery requests, as currently stated, is only likely to result in further litigation regarding the proper scope of the requests. A. Voith Has Consistently Sought to Promptly Produce Documents Subject to Reasonable Restraints on the Disclosure of Voith's Highly Confidential Information. 1. Voith