Heraeus Medical GMBH v. Biomet, Inc.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA

SOUTH BEND DIVISION

HERAEUS MEDICAL GMBH, et al.,

Petitioners,

v. CASE NO. 3:20-CV-802-JD-MGG

BIOMET, INC. et al.,

Respondents.

OPINION AND ORDER

On September 22, 2020, Petitioners Heraeus Medical GmbH and Heraeus S.A.S.

filed their Application for Discovery in Aid of Foreign Litigation Pursuant to 28 U.S.C.

§ 1782 (“the Section 1782 Application”). This would authorize Petitioners to issue and

serve subpoenas upon Respondents Zimmer Biomet Holdings, Inc., Biomet, Inc., Biomet

Orthopedics LLC, Zimmer, Inc., Zimmer US, Inc., and Biomet Manufacturing, LLC. On

December 7, 2020, Respondents filed their Motion Opposing Petitioners’ Application for

Discovery Pursuant to 28 U.S.C. § 1782 (“the Opposition Motion”). On December 21,

2020, Petitioners filed their response to Respondents’ Opposition Motion. Respondents

filed their Reply in Support of their Opposition Motion on January 4, 2021. Petitioners

filed a Motion for Hearing in this matter on July 14, 2021. The undersigned held a

motion hearing via video conferencing on August 18, 2021.

Having reviewed the parties’ written briefs and their oral arguments, this Court

GRANTS, in part, Respondents’ Opposition Motion [DE 24]. The Court DENIES

Request Nos. 1-11 of the Section 1782 Application in full [DE 1] and GRANTS Request

Nos. 12-14 in part.

I. RELEVANT BACKGROUND

Petitioners and Respondents are both involved in the production and sale of

bone cement and are competitors in the market. [DE 1 at 7, ¶ 5]. The parties have been

involved in litigation since 2008—about 13 years—regarding alleged misappropriation

of trade secrets in the production of bone cement, with litigation proceeding in the

United States as well as various European countries. [DE 1 at 13-16]. In 2009, Petitioners

filed two contemporaneous applications for discovery pursuant to 28 U.S.C. § 1782: one

in the Eastern District of Pennsylvania against Esschem (a supplier for Respondents)

and the other in this Court against Biomet and Biomet Orthopedics. Petitioners filed

these applications to obtain evidence in a case against Biomet, several affiliates of

Biomet, and others, in Germany. Using evidence gained from these Section 1782

proceedings, the German court enjoined Biomet and affiliated European companies

from manufacturing and distributing bone cements that used Petitioners’ confidential

information and trade secrets. [DE 1 at 15, ¶ 32].

Since the resolution of the German case, Petitioners sued Zimmer Biomet and

Biomet in the Eastern District of Pennsylvania alleging misappropriation of their

confidential information and trade secrets (“the Pennsylvania Matter”). The

Pennsylvania Matter is currently stayed1 pending resolution of yet another proceeding

1 According to Petitioners, the Pennsylvania Matter was stayed at the time Petitioners filed the instant

Section 1782 Application before this Court on September 22, 2020.

between the parties—one before the United States International Trade Commission

(“ITC”). [DE 1 at 16, ¶ 35]. Petitioners filed a complaint pursuant to 19 U.S.C. § 1337

before the ITC against thirteen Zimmer Biomet companies (Inv. No. 337-TA-1153, the

“ITC Proceeding”) on March 5, 2019. [DE 1 at 16, ¶ 36]. In the ITC Proceeding, the

parties produced numerous documents pursuant to a protective order. The

administrative law judge (“ALJ”) in that matter issued an Initial Determination (“ID”),

which is currently under review by the ITC. [DE 1 at 17, ¶¶ 37-38].

Through their instant Section 1782 Application, Petitioners request production of

fourteen categories of documents to be used in other misappropriation lawsuits

currently pending before courts in France, Belgium, and Germany. The parties disagree

as to the appropriateness of the requested discovery on multiple grounds, including the

role of the ITC’s Protective Order in discovery related to the ongoing foreign

proceedings.

II. LEGAL STANDARD

28 U.S.C. § 1782(a) states that

[t]he district court of the district in which a person resides or is found may

order him to give his testimony or statement or to produce a document or

other thing for use in a proceeding in a foreign or international tribunal. . .

. The order may be made . . . upon the application of any interested person

. . . . To the extent that the order does not prescribe otherwise, the

testimony or statement shall be taken, and the document or other thing

produced, in accordance with the Federal Rules of Civil Procedure.

The “twin aims” of Section 1782 are “providing efficient means of assistance to

participants in international litigation in our federal courts and encouraging foreign

countries by example to provide similar means of assistance to our courts.” Intel Corp. v.

Advanced Micro Devices, Inc., 542 U.S. 241, 252-53 (2004).

Determining whether to grant a request under 28 U.S.C. § 1782 is a two-part

analysis. See id. at 241, 264. First, an applicant must satisfy threshold requirements

based on the statute: (1) the person from whom discovery is sought must reside or be

found in the district of the district court to which the application is made; (2) the

discovery must be for the use in a proceeding before a foreign or international tribunal;

and (3) the application must be made by a foreign or international tribunal or by an

interested person. See 28 U.S.C. § 1782. After an applicant makes this threshold

showing, 28 U.S.C. § 1782 “authorizes, but does not require, the District Court to

provide discovery aid [to the requesting party].” Intel, 542 U.S. at 241; see also Four

Pillars Enters. Co. v. Avery Dennison Corp., 308 F.3d 1075, 1078 (9th Cir. 2002) (“Congress

has given the district courts broad discretion in granting judicial assistance to foreign

countries.”) (internal citation omitted).

The Intel Court articulated four factors to guide courts in deciding whether to

grant a request to aid in foreign litigation:

(1) whether “the person from whom the discovery is sought is a

participant in the foreign proceeding,” in which case, “the need for §

1782(a) aid generally is not as apparent as . . . when evidence is sought

from a nonparticipant in the matter arising abroad”; (2) the “nature of the

foreign tribunal, the character of the proceedings underway abroad, and

the receptivity of the foreign government or the court or agency abroad to

U.S. federal-court judicial assistance”; (3) whether the Section 1782 request

conceals “an attempt to circumvent foreign proof-gathering restrictions or

other policies of a foreign country or the United States”; and (4) whether

the discovery request includes unduly intrusive or overly burdensome

requests.

In re Application of On Otomasyon for Judicial Assistance Pursuant to U.S.C. Section 1782,

No. 2:11-MC-157-PRC, 2011 WL 13150535, at *2 (N.D. Ind. Oct. 20, 2011) (citing Intel, 542

U.S. at 264-65). Despite enumerating these four factors, the Intel Court also declined to

adopt supervisory rules to govern Section 1782 applications such that each application

should be considered in light of its own unique circumstances. Intel at 264.

III. ANALYSIS

Petitioners’ Section 1782 Application requests fourteen sets of documents. The

categories of information in Request Nos. 1-11 consist exclusively of information that

was previously produced, filed, or cited as part of the ITC Proceeding:

1. The 1153 Initial Determination (excluding the confidential business

information of third parties).

2. The following Documents cited by the Administrative Law Judge in the

1153 Initial Determination . . . .

3. Zimmer Biomet’s final Objections and Responses to Heraeus’

Interrogatories 1-107 in the 1153 Investigation.

4. The opening expert report and rebuttal report as well as the following

Documents cited in the opening and/or rebuttal expert reports of

Heraeus’ expert, Dr. Jimmy Mays, in the 1153 Investigation . . .

5. ZBITC-1745837-6029 and all documents located in the same file path.

6. ZBITC-1746362-568 and all documents located in the same file path.

7. The complete deposition transcripts of Dr. Rainer Specht dated August

29, 2019 and August 30, 2019 in the 1153 Investigation and Exhibits

thereto.

8. The complete deposition transcript of Dan Smith dated September 11,

2019 in the 1153 Investigation and Exhibits thereto.

9. The complete deposition transcripts of Lenaic Giffard dated September

16, 2019 and September 17, 2019 in the 1153 Investigation and Exhibits

thereto.

10. The complete deposition transcripts of Frank Schilke dated September

19, 2019 and September 20, 2019 in the 1153 Investigation and Exhibits

thereto.

11. The complete Hearing testimony of Dr. Jimmy Mays, Dr. Thomas

Kluge, Dr. Wolfgang Radke, Lenaic Giffard, Karl-Wilhelm Schneider, Dr.

Anthony DiGoia, Dr. Stephen Spiegelberg, and Dan Smith in the 1153

Investigation . . . .

[DE 37-1 at 8-13]. In addition to these requests that contain evidence produced in the

ITC Proceeding, Petitioners’ Section 1782 Application contains the following Request

Nos. 12-14 that encompass specific documents produced at the ITC Proceeding and any

documents that may have been created after the proceeding:

12. All documents relating to CE market approvals in Europe of Zimmer

Biomet’s -1 and -3 formulations of Refobacin® Bone Cement R and Biomet

Bone Cement R.

13. All documents relating to the selection of any copolymer and its use in

the -3 formulations of Refobacin® Bone Cement R and Biomet Bone

Cement R, including . . . .

14. Documents sufficient to show all sales, including costs and profits

associated with such sales, of the -1 and -3 formulations of Refobacin®

Bone Cement R and Biomet Bone Cement R in each package size

worldwide on a county by country basis from 2005 to the present.

[DE 37-1 at 12-13].

A. Petitioners’ Threshold Showing under 28 U.S.C. § 1782

The first requirement that Petitioners must show under 28 U.S.C. § 1782 is that

Respondents “reside” or are “found” in this district. A business entity meets this

requirement when it is headquartered or incorporated in the judicial district. See In re

On Otomasyon, 2011 WL 13150535, at *2. Zimmer Biomet is an entity created by the

merger of Zimmer Holdings, Inc. and Biomet, Inc. Zimmer Biomet maintains its

principal place of business in Warsaw, Indiana. Biomet, Biomet Orthopedics, and

Biomet Manufacturing are incorporated in Indiana and maintain their principal place of

business in Warsaw, Indiana. Zimmer and Zimmer US maintain their principal place of

business in Warsaw, Indiana. Respondents do not dispute that they are “found” in this

district. Accordingly, Petitioners have satisfied this requirement.

Second, Petitioners must establish that they will use the requested discovery in a

proceeding before a foreign or international tribunal. Here, Petitioners initially stated

that they plan to use the documents requested in this Section 1782 Application in

proceedings currently pending in France, Belgium, and Germany, as well as other

European proceedings. [DE 1 at 6, ¶ 1]. Respondents challenged the breadth of

Petitioners’ requests arguing that the “other European proceedings” were not within

reasonable contemplation. 28 U.S.C. § 1782 “does not require that [a] . . . foreign . . .

proceeding must have already commenced or . . . be pending or imminent . . . . Rather, .

. . the 28 U.S.C. § 1782 requirement of a foreign proceeding is met as long as such

proceeding was ‘within reasonable contemplation’ . . . .” In re Sabag, No. 19-0084, 2020

WL 4904811, at *3 (S.D. Ind. Aug. 18, 2020) (quoting Intel, 542 U.S. at 259). Petitioners

have since clarified that they would not use the requested documents in other foreign

proceedings, such as those in Denmark, Norway, Finland, the Netherlands, Italy, and

Austria, “without first seeking and obtaining an amendment permitting such use.” [DE

30 at 20]. With Petitioners’ clarification that the Section 1782 Application is only for

proceedings currently pending in France, Belgium, and Germany, there is no doubt that

the proceedings are within “reasonable contemplation.” In re Sabag, 2020 WL 4904811, at

*3. Therefore, they have satisfied this second requirement.

Finally, Petitioners have shown that they qualify as “interested persons” under

Section 1782 given their status as litigants in the foreign proceedings for which

discovery was requested. See Intel, 542 U.S. at 256 (“No doubt litigants are among, and

may be the most common example of, ‘the interested person [s]’ who may invoke § 1782

. . . .”). Therefore, the third and final threshold requirement is satisfied.

With Petitioners meeting these statutory threshold requirements, the Court has

discretion to grant or deny the request. Petitioners state that the four-factor test

articulated by Intel favors this Court exercising its discretion to grant their Section 1782

Application and to compel production of the requested discovery. Respondents oppose

Petitioners’ Section 1782 Application, stating that most of the documents requested by

Petitioners were already produced to them in the ITC Proceeding and are subject to that

tribunal’s protective order. Thus, Respondents express concerns about violating the

requirements of the ITC Protective Order.

B. The Intel Factors Analysis

1. Whether the Person from whom the Discovery is Sought is a

Participant in the Foreign Proceeding

The first Intel factor states that: “(1) whether “the person from whom the

discovery is sought is a participant in the foreign proceeding . . .,” in which case, “the

need for § 1782(a) aid generally is not as apparent as . . . when evidence is sought from a

nonparticipant in the matter arising abroad.” See In re On Otomasyon, 2011 WL 13150535,

at *2, citing Intel, 542 U.S. at 244. This is because “[a] foreign tribunal has jurisdiction

over those appearing before it, and can itself order them to produce evidence,” whereas

“nonparticipants in the foreign proceeding may be outside the foreign tribunal’s

jurisdictional reach [and] their evidence . . . may be unobtainable absent § 1782(a) aid.”

Intel, 542 U.S. at 244.

Petitioners have clarified that their application is only for use in proceedings

currently pending in Germany, France, and Belgium. [DE 30 at 20]. Biomet, one of the

Respondents, is a party to the proceedings in Germany and France. However, none of

the respondents are party to the proceeding in Belgium. [DE 1 at 25, ¶ 68]. Therefore,

the Court must also consider whether the “discovery procedures available . . . in the

pending proceedings are insufficient to procure the requested discovery.” In re

Lufthansa Technick AG, No. C17-1453-JCC, 2019 WL 331839 at *2 (W.D. Wash. Jan. 25,

2019).

Unavailability of the requested discovery in the foreign tribunal favors granting

a Section 1782 application. See Heraeus Kulzer GmbH v. Biomet, Inc., 633 F.3d 591, 596 (7th

Cir. 2011). In Heraeus Kulzer GmbH v. Biomet, Inc., on appeal from this Court’s 2009 order

on Petitioner Heraeus Kulzer GmbH’s Section 1782 Application requesting documents

for use in a German proceeding, the court observed that the discovery requested “is

unobtainable in the German legal system . . . A party to a German lawsuit cannot

demand categories of documents . . . . All he can demand are documents that he is able

to identify specifically—individually, not by category.” 633 F.3d at 596.

According to Petitioners, here, they are unlikely to access the requested

discovery through the French, Belgian, and German proceedings, citing declarations

from their attorneys in these countries. Petitioners’ German counsel states that:

[i]n German litigation, Heraeus does not have formalized means to

request and subsequently obtain information from the other party . . . .

The German Civil Procedure (ZPO) merely provides . . . that a party may

request that the other party or a third party be ordered to present a

certain, specifically-identified document, however, there are no procedural

means in a German trade secret case to seek general discovery of the

internal documents of the other party . . . . Therefore, if information is

uniquely within the knowledge and possession of the other party, it cannot be

obtained under German civil procedure rules.

[DE 25 at 12, ¶ 44 (emphasis added)]. Petitioners’ Belgian counsel identifies similar

limitations:

Article 877 of the Belgian Judicial Code permits parties to pending

proceedings to request the production of documents from a party to the

proceedings or a third party, but only if the documents are precisely identified

and where there are serious and consistent indications that this party

would detain such documents . . . . Therefore, if information is uniquely

within the knowledge and possession of the other party, it cannot be obtained

under Belgian civil procedure rules.”

[DE 26 at 5, ¶ 12 (emphasis added)]. Petitioners’ French counsel provides that “. . . the

French code of Civil Procedure permit[s] parties to pending proceedings to request the

production of a document held by third-parties . . . but only if the document is

specifically identified.” [DE 27 at 4, ¶ 14 (emphasis added).]

Petitioners’ foreign attorneys all concede that there is a way to obtain discovery

in proceedings in their respective foreign countries—by identifying which documents

are required with specificity. Therefore, the Court is not persuaded that discovery

procedures available in these foreign tribunals would be insufficient for Petitioners’

purposes. Here, unlike the request in Heraeus Kulzer GmbH, Petitioners can request

specific documents as evidenced by Request Nos. 1–14 attached to their Application

before this Court. Petitioners even admit that they “drew on [their] knowledge of the

existence of certain documents that Respondents had designated Confidential Business

Information (CBI) to identify those documents for the purpose of formulating its

discovery requests.” [DE 30 at 13]. In addition, Petitioners acknowledged in their initial

Application that “the vast majority of the Requested § 1782 Discovery was already

produced by Zimmer Biomet and relied on by Heraeus’ technical expert, Dr. Jimmy

Mays, and/or the ALJ in the 1153 Investigation” at the ITC. [DE 1 at 17-18, ¶¶ 39-40].

Further, once a petitioner makes the threshold statutory showing “. . . the

ordinary tools of discovery management, including Rule 26, come into play . . .” Heraeus

Kulzer, GmbH, 633 F.3d at 597. Under Federal Rule 26, the scope of discovery is limited

to “any nonprivileged matter that is relevant to any party’s claim and proportional to

the needs of the case, considering . . . the parties’ relative access to relevant information, the

parties’ resources, . . . .” among other considerations. Fed. R. Civ. P. 26(b)(1) (emphasis

added). The documents sought through Petitioners’ Request Nos. 1-11 and portions of

Request Nos. 12-14 are the same materials that Petitioners already received during the

proceeding before the ITC. Additionally, Request Nos. 1 and 2 simply request the ITC

proceeding record and items cited in the ALJ’s ID -- not documents that Respondents

uniquely possess.

Given Petitioners’ clear ability to identify specific documents and thereby request

them from the foreign tribunals, as well as their possession of most of the request

information already, discovery procedures are not insufficient in the foreign tribunals.

Therefore, the first factor favors denying Petitioners’ application.

2. Whether the Foreign Tribunal Will be Receptive to the Discovery

Many courts reviewing Section 1782 applications have found that this second

factor weighs against granting an application if there is “authoritative proof that [the]

foreign tribunal would reject evidence obtained with the aid of section 1782.” In re

Caterpillar Inc., 3:19-MC-0031, 2020 WL 1923227, at *12 (M.D. Tenn. Apr. 21, 2020)

(quoting Euromepa S.A. v. R. Esmerian, Inc., 51 F.3d 1095, 1100 (2d Cir. 1995)). As noted

above, Petitioners have submitted declarations from their attorneys in France, Germany,

and Belgium to suggest that those tribunals would accept evidence produced pursuant

to 28 U.S.C. § 1782. [DE 1 at 28-29, ¶ 76]. Respondents cite nothing to show that these

tribunals would reject this evidence. With only the declarations of Petitioners’ counsel,

the Court cannot conclude that the foreign tribunals would reject the evidence at issue

in Petitioners’ Application. Therefore, this factor is equivocal and neither favors nor

disfavors granting Petitioners’ Section 1782 Application.

3. Whether the Section 1782 Request Conceals “an Attempt to

Circumvent Foreign Proof-Gathering Restrictions or Other

Policies of a Foreign Country or the United States”

Petitioners contend that they are not attempting to circumvent the foreign

countries’ proof-gathering restrictions. Courts reviewing Section 1782 under this factor

consider whether granting the requested discovery would be an affront to the foreign

courts. Application of Gianoli Aldunate, 3 F.3d 54, 61-62 (2d Cir. 1993). In support,

Petitioners point to their international counsels’ declarations, who state that no court

has raised concerns or expressed its offense to Section 1782 discovery in proceedings in

their respective countries. [DE 1 at 31, ¶ 82].

However, much of the discovery requested in the instant Application was

delivered to Petitioners in the ITC Proceeding pursuant to a protective order entered by

that tribunal. Therefore, the ITC’s restrictions on the requested information through its

protective order are also implicated here.2 The ITC’s proceedings are governed by

Section 337 of the Tariff Act of 1990 (19 U.S.C. § 1337). This provides that:

(1) Information submitted to the Commission or exchanged among the

parties in connection with proceedings under this section which is

properly designated as confidential pursuant to Commission rules may

not be disclosed (except under a protective order issued under regulations

of the Commission which authorizes limited disclosure of such

information) to any person (other than a person described in paragraph

(2)) without the consent of the person submitting it.

19 U.S.C. § 1337(n). As relevant here, the ITC Protective Order provides that:

[i]n the absence of written permission from the supplier or an order by the

Commission or the Administrative Law Judge, any confidential

documents or business information submitted in accordance with [the

proceeding] shall not be disclosed to any person other than: (i) outside

counsel for parties . . .(ii) qualified persons taking testimony . . . (iii)

technical experts and their staff who are employed for purposes of this

litigation . . . (iv) the Commission, the Administrative Law Judge, the

Commission staff, and personnel of any governmental agency as

authorized by the Commission; (v) the Commission, its employees and

Offices, and contract personnel . . . and (vi) U.S. government employees

and contract personnel, solely for cybersecurity purposes.

[DE 24-3 at 2-3].

2 The parties make numerous arguments about whether Petitioners have already used Respondents’

confidential business information outside of the ITC proceeding or whether Petitioners have already

violated the ITC Protective Order by filing this Section 1782 request, which the Court need not address to

resolve Petitioners’ instant Section 1782 Application.

Petitioners argue that the ITC’s Protective Order should not prevent them from

requesting discovery pursuant to Section 1782. Moreover, Petitioners contend that they

should not be required to request an amendment to the ITC Protective Order before

pursuing a Section 1782 Application. And lastly, Petitioners maintain that the ITC

Protective Order does not expressly prohibit disclosure of information in foreign

proceedings.

First, Petitioners point to numerous cases providing that it is not improper to use

knowledge of protected information to request that information from the party who

initially disclosed it. [DE 30 at 10]. Specifically, Petitioners point to Wauchop v. Domino’s

Pizza, Inc., 138 F.R.D. 539, 544 (N.D. Ind. 1991), Guiden v. Leatt Corp., No. 5:10-cv-175-R,

2013 WL 12234612, at *2 (W.D. Ky. Apr. 30, 2013), Lamar v. Cooper Tire & Rubber Co., No.

08-14387-CIV, 2009 WL 10666914, at *4 (S.D. Fla. July 20, 2009), and Carter-Wallace, Inc. v.

Hartz Mountain Industries, Inc., 92 F.R.D. 67, 69 (S.D.N.Y. 1981). [DE 30 at 10]. Petitioners

also point to authority providing that a protective order in one lawsuit does not impede

discovery in a subsequent lawsuit: “. . . [i]t may readily be agreed that discovery in one

lawsuit that is subject to a protective order may not necessarily, or even often, preclude

discovery in a subsequent lawsuit (with or without a protective order issued by the new

court).” In re Biomet Orthopedics Switzerland GmBh, 742 F. App’x 690, 693 (3d Cir.

2018)(internal citation omitted)). [DE 30 at 14]. However, these cases involve

circumstances distinguishable from those at issue in Petitioners’ current Section 1782

Application. In these cases, the parties made their requests using knowledge of or

referring to discovery that their opposing party had disclosed to a completely different

adversary pursuant to a protective order in another proceeding. Therefore, in these

cases, the party seeking discovery did not already possess all the specific documents

that they were seeking from their adversary.

Further, in In re Biomet Orthopedics Switzerland GmBh, Biomet was seeking Section

1782 discovery that Heraeus had disclosed to Esschem, a supplier of Respondent,

pursuant to a protective order in another proceeding. In this matter, the court also

noted that Biomet would not be able to obtain the requested documents absent Section

1782 because it could not request all the specific documents it needed: “Although

Biomet could use German procedures to request the specific documents it already has

from the public Esschem filings, it could not request a broader set of documents

pertinent to its defense without being able to identify those individual documents.” 742

Fed. App’x at 696. Given that Biomet did not already possess all the documents it

needed as it was not a party to the original proceeding, the Court also finds this case

inapposite to the circumstances of Petitioners’ Section 1782 Application.

Second, Petitioners state they should not be required to turn to the ITC first

because the ITC is “loath to amend protective orders to allow for the disclosure of

discovery materials” and that going to the ITC in this situation would frustrate the aims

of 28 U.S.C. § 1782. [DE 30 at 8]. Yet, Petitioners fail to acknowledge that the ITC

Protective Order was amended on at least three occasions to permit other individuals

access to the same confidential business information at issue here. The Protective Order

was amended via joint motion on June 21, 2019, to “permit specified European outside

counsel and in-house access to confidential business information . . . .” [DE 24-3 at 15].

The protective order was also amended via joint motion on October 7, 2019, to permit

outside counsel in the United Kingdom access to information. [DE 24-3 at 20]. It was

again amended via joint motion to permit in-house counsel access to information and to

“permit documents and testimony produced in this Investigation to be used in

Investigation No. 337-TA-1175 without reproducing said documents and testimony.”

[DE 24-3 at 24].

Third, Petitioners argue that the ITC Protective Order should not prevent them

from using documents obtained pursuant to that protective order in their current

foreign proceedings because it does not expressly prohibit disclosure of protected

information in foreign proceedings. Petitioners direct the Court to Via Vadis Controlling

GmbH v. Skype, Inc., No. CIV.A. 12-MC-193-RGA, 2013 WL 646236, at *3 (D. Del. Feb. 21,

2013) and Andover Healthcare, Inc. v. 3M Co., No. 14-MC-44 SRN/JJK, 2014 WL 4978476,

at *1 (D. Minn. Oct. 6, 2014), neither of which are persuasive here.

In Via Vadis, the documents requested were produced under a protective order

that specifically prohibited disclosure of certain evidence in proceedings pending in

Germany and Luxembourg. 2013 WL 646236, at *3. In 3M, the requested documents

were produced pursuant to a protective order issued by another district court that had

previously prohibited use of those documents in litigation then pending between the

parties in Germany. 2014 WL 4978476, at *1. While the courts in both cases relied upon

the express terms of protective orders issued by other tribunals as part of their

discretion to deny requests under Section 1782, neither suggested that a protective order

must order protection of documents from disclosure in foreign proceedings to be

honored by other tribunals. In fact, district courts retain discretion to deny portions of a

Section 1782 application that would exasperate another jurisdiction’s protective order.

See Four Pillars Enters. Co, 308 F.3d at 1079 (noting that a “. . . magistrate judge did not

abuse his discretion in concluding that a discovery order for this material under § 1782

[which had already been produced in another district court] would improperly frustrate

the order of the [other district court].”).

Here, 19 U.S.C. § 1337(n) clearly states that confidential information submitted to

the ITC or exchanged among the parties in a proceeding before the ITC may not be

disclosed without consent or pursuant to a protective order. [DE 24-3 at 3]. In addition,

the ITC Protective Order states that any nonauthorized disclosure must be brought to

the ITC ALJ’s attention: “i[f] confidential business information submitted in accordance

with [this Protective Order] is disclosed to any person other than in the manner

authorized . . . the party responsible for the disclosure must immediately bring all

pertinent facts relating to such disclosure to the attention of the [supplying party] and

the Administrative Law Judge . . . .” [DE 24-3 at 8]. Given the ITC’s clear directive on

the maintenance of confidential information and the process to follow up on

nonauthorized disclosure, granting Petitioners’ instant request – based primarily on

documents from an ITC Proceeding, including ITC administrative documents – would

frustrate that order. Based on the foregoing, the third factor in Intel favors denying

Petitioners’ § 1782 Application.

4. Whether the Discovery Request Includes Unduly Intrusive or

Overly Burdensome Requests

“Once a section 1782 applicant demonstrates a need for extensive discovery for

aid in a foreign lawsuit, the burden shifts to the opposing litigant to demonstrate . . .

that allowing the discovery sought (or a truncated version of it) would disserve the

statutory objectives.” See Heraeus Kulzer, 633 F.3d at 597. Petitioners contend that their

instant discovery requests are not unduly intrusive or overly burdensome, stating that

“many of the documents requested . . . have already been collected, reviewed for

privilege, bates numbered and produced in the prior ITC matter . . . .” [DE 1 at 32, ¶ 86].

Petitioners further argue that “the relevance of the documents sought is clear and the

discovery aimed at proving the misappropriation by Zimmer Biomet Group, as already

found by the German court and the [ITC] is clear.” Id. Petitioners also explain that

information produced by Zimmer Biomet in the ITC proceeding is not up to date as

needed for the foreign proceedings because “it has been well over a year since the last

production in that matter.” [DE 30 at 22]. As such, Petitioners contend that their

Request Nos. 12-14 are not unduly intrusive or burdensome.

Notably, Respondents have not proffered any information regarding the burden

that complying with these requests would impose. Respondents did not give the “court

an estimate of the number of documents that it would be required to provide Heraeus

in order to comply with the request, the number of hours of work by lawyers and

paralegals required, and the expense.” See Heraeus Kulzer, GmbH, 633 F.3d at 598.

Instead, Respondents have simply contended that “Heraeus already has these types of

documents. There is no legitimate reason that Zimmer Biomet should be forced to

expend the resources necessary to investigate whether new information exists since the

company made its ITC discovery productions.” [DE 24 at 21].

While it is true that Petitioners already possess many of the documents they have

requested here, Request Nos. 12-14 encompass documents that postdate the ITC

Proceeding. Petitioners do not already possess these documents. Therefore, Petitioners

are not able to identify these documents with the specificity necessary to request them

under the governing procedural rules of the foreign tribunals. Moreover, an

amendment to the ITC Protective Order will not allow Petitioners to utilize these

documents in foreign proceedings because they were not produced during the ITC

Proceeding.

“If a district court is concerned that granting discovery under § 1782 will

engender problems in a particular case, it is well-equipped to determine the scope and

duration of that discovery.” Application of Esses, 101 F.3d 873, 876 (2d Cir. 1996). In

addition, Section 1782 provides courts with wide discretion “to tailor such discovery to

avoid attendant problems.” Id. As stated, granting Request Nos. 1-11 and the portions of

Request Nos. 12-14 that duplicate the production at the ITC Proceeding would frustrate

that order. Further, Petitioners can request that discovery due to their ability to

specifically identify documents. However, tailoring the request to the portions of

Requests No. 12-14 that encompass documents postdating the production in the ITC

Proceeding allows Petitioners to get additional discovery needed for their proceedings

without frustrating the ITC Protective Order.

Based on the foregoing, this factor weighs in favor of granting portions of

Petitioners’ Request Nos. 12-14 that involve documents not already produced as part of

the ITC Proceeding.

III. CONCLUSION

For the reasons discussed above, the Court GRANTS Respondents’ Opposition

Motion IN PART [DE 24] and DENIES IN PART Petitioners’ Section 1782 Application

[DE 1] as to the totality of Request Nos. 1-11 and as to Request Nos. 12–14 to the extent

they seek information duplicating Respondents’ production in the proceeding before

the ITC. Respondents are hereby ORDERED to produce information created after the

date of production in the ITC matter and responsive to Request Nos. 12-14. This Court

will entertain a stipulated motion for protective order related to this production as

deemed necessary by the parties.

SO ORDERED this 10th day of September 2021.

s/Michael G. Gotsch, Sr.

Michael G. Gotsch, Sr.

United States Magistrate Judge