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In re Syngenta AG MIR 162 Corn Litigation

United States District Court, D. Kansas

March 24, 2017

IN RE SYNGENTA AG MIR 162 CORN LITIGATION, This Document Relates to All Cases In re Syngenta Litigation This Document Relates to ALL ACTIONS File No. 27-cv-15-3785 MDL No 2591

          JOINT DISCOVERY ORDER REGARDING DOCUMENTS POSSESSED BY J. THOMAS CARRATO

          JAMES P. O'HARA, U.S. MAGISTRATE JUDGE

         In both of these actions, intervenor Monsanto Company has filed a motion to quash (in part) the subpoena plaintiffs served on J. Thomas Carrato, one of Syngenta's designated experts, who was employed by Monsanto as an in-house attorney and, later, a consultant.[1]Monsanto seeks to quash each subpoena insofar as compliance with its commands would require Mr. Carrato to produce privileged and/or confidential documents that came into Mr. Carrato's possession in the course of his work for Monsanto. Plaintiffs have filed in each action a cross-motion to compel Mr. Carrato to produce documents responsive to each subpoena.[2] Plaintiffs seek production of documents from Mr. Carrato's personal files that plaintiffs allege will enable them to assess and challenge the bases for the opinions Mr. Carrato seeks to offer in these actions. As discussed below, the motions to quash are granted in part and denied in part, and the motions to compel are granted in part and denied in part.

         I. Background

         Prior to his involvement in this litigation, Mr. Carrato was employed by Monsanto as Associate General Counsel for over 21 years, retiring in January 2014. During that time, he held a number of business positions within Monsanto, in addition to working as an attorney, including chairing Monsanto's Executive Product Stewardship and Product Stewardship Teams. He also represented Monsanto in outside trade organizations and industry groups, such as the Biotechnology Industry Organization (“BIO”). After retiring from Monsanto, Mr. Carrato formed a consulting firm called Creative Biotech Solutions LLC, and served as a consultant to Monsanto until 2016.

         In his capacities as both an attorney and consultant for Monsanto, Mr. Carrato executed confidentiality agreements, which included requirements that upon his termination he return all documents containing Monsanto's proprietary or confidential information to Monsanto, without retaining any copies. This apparently was not done. In the course of the past few months, Mr. Carrato has identified hundreds of documents that he obtained during the course of his employment with Monsanto, which were not returned or destroyed upon his separation from Monsanto.

         Syngenta retained Mr. Carrato as an expert witness in these actions. In that role, Mr. Carrato prepared a written report pursuant to Fed.R.Civ.P. 26(a)(2)(B) and Minn. R. Civ. P. 26.01(b)(2), discussing the industry standards for commercialization of new genetically-modified (“GM”) crops and opining Syngenta acted in a manner consistent with those standards.[3] On January 6, 2017, the MDL plaintiffs filed a notice of issuance of a subpoena duces tecum to Mr. Carrato pursuant to Fed.R.Civ.P. 45 (“federal subpoena”).[4] The federal subpoena sought the production of documents falling into 19 designated categories that the MDL plaintiffs say will enable them to challenge the bases of Mr. Carrato's opinions. On January 9, 2017, the Minnesota plaintiffs filed a Minn. R. Civ. P. 45 subpoena, similarly seeking Mr. Carrato's deposition and production of documents in his possession (“Minnesota subpoena”).[5] The Minnesota subpoena was the same in all material respects as the federal subpoena, except that it contained 11 additional document requests. According to Mr. Carrato, “[m]ost of the documents” responsive to the subpoenas “came into [his] possession while he was employed at Monsanto.”[6] Upon learning of the subpoenas, Monsanto moved to, and was granted leave to, intervene in both actions.[7]

         On January 20, 2017, Mr. Carrato produced to plaintiffs copies of some (but not all) of the responsive documents.[8] After identifying additional responsive documents, Mr. Carrato produced a second round of documents on January 28, 2017.

         On January 28 and 29, 2017, Mr. Carrato sat for a deposition in the coordinated actions, presided over by the undersigned judicial officials, U.S. Magistrate Judge James P. O'Hara and Special Master John B. Van de North, which Monsanto was permitted to (and did) attend. Counsel for both the MDL and Minnesota plaintiffs questioned Mr. Carrato, and counsel for Syngenta and Monsanto lodged objections, which were ruled upon live by the undersigned.

         Mr. Carrato served plaintiffs his responses and objections to the federal subpoena on January 31, 2017, and to the Minnesota subpoena on February 2, 2017. On February 6, 2017, he gave plaintiffs a privilege log listing 175 responsive documents not produced on the grounds of attorney-client privilege and/or confidentiality.[9] Finally, Mr. Carrato identified 12 additional responsive documents, but withheld them all (thereby rasing the number of withheld documents to 187) and produced a supplemental privilege log listing the documents as confidential.[10]

         After receiving briefing on the instant motions, the undersigned ordered Mr. Carrato to submit documents withheld on the basis of attorney-client privilege for in camera review.[11] Although there was some indication in Mr. Carrato's brief that Monsanto was given access to withheld documents and participated in drafting Mr. Carrato's privilege log, [12]Monsanto's brief vehemently rejected the notion that the privilege log was joint work product, asserting that “the drafting and production of the log was controlled by Carrato's counsel, ” who “disregarded” some of Monsanto's recommendations.[13] Thus, to proceed on a clear record of Monsanto's privilege assertions, the undersigned ordered Monsanto to submit its own privilege log. On its log, Monsanto asserted protection over 184 documents.

         Today, about 155 documents remain at issue. Plaintiffs have withdrawn their motion to compel as it relates to privilege log entries 83, 85, 122, and 131-32.[14] Mr. Carrato produced the documents listed as privilege log entries 84 and 86, and the parties state those documents are no longer at issue.[15] Finally, on March 10, 2017, at the courts' directive, [16] the parties met in person to discuss the remaining withheld documents, which resulted in plaintiffs withdrawing their motion to compel as to privilege log entries 1-5, 22-23, 79, 82, 87, 111-13, 140, and 147-55.[17]

         II. Rule 45 Legal Standards

         Fed. R. Civ. P. 45 and Minn. R. Civ. P. 45.01-45.06 govern subpoenas issued to non-parties, such as Mr. Carrato. When a subpoena affects the interests of a second non-party, like Monsanto, the non-party whose interests are implicated has standing to challenge the subpoena.[18] Federal Rule 45(d)(3)(A) outlines circumstances under which a court must quash or modify a subpoena, including when the subpoena “requires disclosure of privileged or other protected matter, if no exception or waiver applies, ” and when the subpoena “subjects a person to undue burden.”[19] Under Fed.R.Civ.P. 45(d)(3)(B), the court may quash or modify a subpoena if it requires the disclosure of a “trade secret or other confidential research, development, or commercial information.”[20]

         The flip side of a motion to quash a subpoena is a motion to compel compliance with the subpoena filed by the party that issued the subpoena, here plaintiffs. Under Fed.R.Civ.P. 45(d)(2)(B) and Minn. R. Civ. P. 45.03(b)(2), if a person commanded to produce documents serves written objections to production, the serving party may move the court for an order compelling production of the documents.

         As mentioned above, Monsanto and plaintiffs have filed cross-motions to quash/compel in these cases. Five main questions arise from the motions and accompanying briefs: (1) Are documents responsive to the subpoena protected by the attorney-client privilege?; (2) Do documents responsive to the subpoena contain Monsanto's confidential commercial information and, if so, would disclosure of the information result in harm to Monsanto that outweighs the benefit to plaintiffs?; (3) Should a confidentiality agreement Mr. Carrato entered with Monsanto and/or the attorney-client relationship between Mr. Carrato and Monsanto bar production of the documents?; (4) Should Mr. Carrato's subpoena objections based on relevancy and undue burden be upheld?; and (5) Did Mr. Carrato properly limit the scope of his responses on certain requests to documents relating only to No. 2 yellow corn? The undersigned address each of these questions in turn.[21]

         III. Attorney-Client Privilege

         Ninety documents continue to be withheld by Mr. Carrato on grounds that they are protected by Monsanto's attorney-client privilege-specifically, privilege log entries 7-8, 12-15, 17-18, 26, 28-29, 32-46, 51-64, 69-73, 80-81, 90-108, 114, 117-21, 123-30, 133, 137, 144, 156-57, 159-60, 162, and 168. Before specifically addressing these documents, the undersigned will address plaintiffs' argument that Monsanto has waived any privilege protection by submitting an inadequate privilege log.

         A. Privilege Log

         Although Fed.R.Civ.P. 26(b)(5)(A) doesn't expressly require a privilege log, a party withholding information on privilege grounds generally satisfies the tenets of that rule by providing a privilege log.[22] The level of detail required in a privilege log is determined on a case-by-case basis, [23] but courts in the District of Kansas have stated that a privilege log generally should contain the following:

1. A description of the document explaining whether the document is a memorandum, letter, e-mail, etc.;
2. The date upon which the document was prepared;
3. The date of the document (if different from # 2);
4. The identity of the person(s) who prepared the document;
5. The identity of the person(s) for whom the document was prepared, as well as the identities of those to whom the document and copies of the document were directed, “including an evidentiary showing based on competent evidence supporting any assertion that the document was created under the supervision of an attorney;”
6. The purpose of preparing the document, including an evidentiary showing, based on competent evidence, “supporting any assertion that the document was prepared in the course of adversarial litigation or in anticipation of a threat of adversarial litigation that was real and imminent;” a similar evidentiary showing that the subject of communications within the document relates to seeking or giving legal advice; and a showing, again based on competent evidence, “that the documents do not contain or incorporate non-privileged underlying facts;”
7. The number of pages of the document;
8. The party's basis for withholding discovery of the document (i.e., the specific privilege or protection being asserted); and
9. Any other pertinent information necessary to establish the elements of each asserted privilege.[24]

         At the very least, a privilege log should contain sufficient information so that the opposing party and the court can evaluate the claimed privilege.[25] If a party fails to carry its burden of establishing that any documents withheld are subject to privilege, the court may conclude that the privilege is waived.[26]

         The undersigned are cognizant of the fact that much time and resources were no doubt spent by both Monsanto and Mr. Carrato in reviewing the documents at issue and in creating their respective privilege logs. Unfortunately, however, the privilege logs, in large part, lack the detail necessary for the undersigned to reach a finding of privilege. The very sparse information included leaves the undersigned only to guess whether the documents withheld actually contain privileged information.

         For example, with very few exceptions, Monsanto's privilege log lists the recipients of the various documents as simply “Monsanto Company, ” without delineating the individual recipients (or their corresponding professional titles or job positions). By this description, Monsanto has chosen to leave the undersigned in the dark as to whether the documents were shared only with key Monsanto managers needing legal advice, or whether they also were shared widely with lower-level employees.[27] In other words, the undersigned have no way of determining whether the multitudes of persons who were sent particular documents were attorneys or business persons, and with respect to the latter category, whether they had a need to know the contents of those documents.

         Similarly, in the “purpose” field of the log, Monsanto sometimes states a document reflects Mr. Carrato's legal advice, but in many other instances states simply that it contained legal advice, which, when compared to the more specific descriptions, implies that the document reflects legal advice of an unnamed person other than Mr. Carrato.[28]

         Additionally, beyond the conclusory statements set forth in the privilege logs themselves, Mr. Carrato's February 20, 2017[29] and February 23, 2017 declarations, and Monsanto's March 16, 2017 Notice of Submission of Redacted Documents, [30] no evidence was submitted to defend Monsanto's claim that its in-house lawyer and the purported author of the documents in question, Mr. Carrato, was acting in his capacity as a lawyer rather than a business advisor in drafting the documents. It is undisputed that Mr. Carrato held a variety of business positions at Monsanto, in addition to working as legal counsel, and that he also held several external industry roles. Mr. Carrato's deposition testimony confirms that with respect to stewardship issues in particular, he was often acting in a business capacity rather than in his legal capacity as Monsanto's in-house attorney.[31] The undersigned often cannot glean from the cursory document descriptions on Monsanto's privilege log whether Mr. Carrato was providing legal, as opposed to business, advice.

         In the end, although one could review the privilege logs and speculate about what types of communications were happening, the fact remains that it was Monsanto's burden to clearly establish that the withheld documents are subject to the attorney-client privilege. With few exceptions, Monsanto has failed to satisfy its burden. Thus, although the undersigned likely could find waiver of privilege based on Monsanto's inadequate privilege log, they nonetheless have reviewed the withheld documents in camera and base their rulings below on their conclusions resulting from that review. However, where the content of a document and the description on Monsanto's privilege log, along with our review, provide no basis from which the undersigned could conclude that legal advice was sought or given, or that the purpose of the document was not predominantly business-related, or that the persons receiving the document were within the circle of those persons entitled to receive attorney-client communications, the privilege is rejected and the document is ordered produced.

         B. Privilege Standards and Analysis

         The legal standards applicable to the attorney-client privilege are well established and do not vary significantly between federal law and Minnesota state law. Many of these standards were set out in Judge O'Hara's January 27, 2017 order first addressing the subpoena to Mr. Carrato in the MDL[32] but will be repeated here for the parties' convenience.

         Fed. R. Civ. P. 26(b)(1) limits discovery to “nonprivileged matters.” Under federal common law, the essential elements of the attorney-client privilege are: (1) where legal advice of any kind is sought (2) from a professional legal advisor in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal advisor, (8) except if the protection is waived.[33] Although this description suggests that the privilege only operates to protect the client's communications to a lawyer, the Tenth Circuit recognizes that a lawyer's communication to a client is also protected if it is “related to the rendition of legal services and advice.”[34] The party asserting the privilege bears the burden of establishing that the elements are met.[35]

         Caselaw provides a wealth of guidance as to what is-and is not-protected by the attorney-client privilege. First, it is important to note that “personal, confidential, [or] private information” is not necessarily privileged.[36] “As this Court has held repeatedly, ‘confidential' does not equate to ‘nondiscoverable' or privileged.”[37] Second, it is clear that “[u]nderlying facts are not protected by the privilege.”[38] “Similarly, neither the acts or services performed by an attorney during the course of his representation, nor the scope of representation, are within the attorney-client privilege because they are not ‘communications.'”[39] Third, neither the “general topics of attorney-client discussions” nor ultimate “legal conclusions” of counsel are protected.[40] Thus, for example, the subject matters of an in-house attorney's discussions with company executives are not privileged.[41]Fourth, where a communication contains both legal advice and business advice, attorney-client protection only applies if the legal advice predominates over the business advice; the privilege does not apply where legal advice is merely incidental to business advice.[42] Fifth, “[d]rafts of documents to be submitted to third parties, although prepared by counsel, are not generally privileged. Submission of the document to the third party removes any cloak of privilege.”[43] On the other hand, drafts of memorandum prepared for a client are protected.[44] Sixth, the attorney-client privilege does not attach to simple editing or “word-smithing” by counsel.[45]

         Finally, it bears mentioning that under the eighth element, absence of waiver, the party claiming the privilege must demonstrate that “the substance of an otherwise privileged communication” is not revealed to a third party.[46] The burden of showing that the privilege has not been waived remains with the party claiming the privilege.[47] “Because confidentiality is key to the privilege, ‘[t]he attorney-client privilege is lost if the client discloses the substance of an otherwise privileged communication to a third party.'”[48]

         The undersigned have jointly reviewed all 90 at-issue documents and carefully applied the above legal standards. Set out below are the specific documents that the undersigned are ordering Mr. Carrato to produce and the rationale for rejecting Monsanto's withholding of those documents based on its assertion of attorney-client privilege. As for documents not specifically listed or discussed, the undersigned determined, based on their review, that they are privileged and shall not be produced.

         Doc. Nos. 12-13: Monsanto claims that these documents describe legal goals and law-team results that contain the legal advice of Mr. Carrato regarding regulatory actions in various countries and the development of strategies to achieve business goals and successful litigation results. Based on the content and the context of these documents, there is no evidence of legal advice within the documents or that legal advice was sought or given. The undersigned find that these documents deal predominantly with business information and legal goals and results, and therefore, are not privileged.

         Doc. No. 17: Monsanto claims that this document is a draft presentation regarding Roundup Ready Corn that contains the legal advice of Mr. Carrato concerning an action plan for detection of a trait. Based on the content and the context of this document, there is no evidence of legal advice within the document or that legal advice was sought or given. This document predominantly contains business information and advice, and therefore, is not privileged.

         Doc. No. 18: Monsanto claims that this document is a draft document regarding Identity Preserved Production and Pollen Movement that contains legal comments and revisions by Mr. Carrato regarding status of approvals and how to deal with identity preserved crop. With the exception of pages 1-6, which shall be redacted, the balance of the document (pages 7-9) shall be produced on the basis that it predominantly concerns non-privileged business information concerning cross-pollination, along with Mr. Carrato's editorial redlines. The attorney-client privilege does not attach to simple editing or “word-smithing” by counsel.

         Doc. Nos. 57-58: Monsanto claims that these documents concern, respectively, a draft memo and a memo regarding the status of biotech approvals in China that contain Mr. Carrato's legal comments and revisions about the Chinese regulatory process and approval status. With the exception of paragraphs 3-4 on page 2 of the documents, which shall be redacted, the balance of the documents shall be produced on the basis that they predominantly concern business advice and not legal matters, and therefore are not privileged.

         Doc. Nos. 59-60: Monsanto claims that these documents are draft communication plans that contain Mr. Carrato's legal comments and revisions regarding a grain-channeling communication plan in the event of a channeling issue. On balance, the documents are not privileged. With the exception of paragraph 3 on page 4 of each document, which shall be redacted, the balance of the documents shall be produced on the basis that they predominantly concern business information and advice, not legal matters.

         Doc. Nos. 103-08: Monsanto claims that these documents are internal Monsanto stewardship-policy presentations regarding the commercialization of biotechnology-derived plant products in commodity crops. Monsanto further asserts that these documents contain legal advice regarding liability risks associated with commercialization of new traits. For the following reasons, the undersigned find that Monsanto has not met its burden to demonstrate that the attorney-client privilege applies to these documents.

         First, while the privilege log lists Mr. Carrato as the author of these documents, in contrast to other entries on the log, the log's “purpose” column does not identify Mr. Carrato as the person providing the legal advice allegedly provided in these documents regarding liability risks associated with commercialization of new traits. A related concern is that, on their face, Doc. Nos. 103-04 identify a second author who is not identified on Monsanto's privilege log and whose affiliation, job title, and position is not provided.

         Second, as with nearly every other entry on its privilege log, Monsanto lists the recipients of these documents as simply “Monsanto Company.” Therefore, the undersigned have no way of determining whether the persons receiving these documents were within the circle of those persons entitled to receive attorney-client communications.

         Third, even assuming that Mr. Carrato was, in fact, the author of all of the information contained in these documents, and that all of the recipients were within the circle of persons entitled to receive attorney-client communications, there does not appear to be legal advice provided in these documents. Rather, these documents appear to concern non-privileged business information and advice.

         Fourth, the undersigned cannot conclude based on the face of these documents that Mr. Carrato was acting in his capacity as a lawyer, rather than a business advisor, in drafting said documents. To the contrary, Mr. Carrato confirmed during his January 28-29, 2017 deposition that much of the stewardship information and advice that he provided to and discussed with Monsanto was not in the nature of legal advice.[49]

         Based on the foregoing, Monsanto has not met its burden to demonstrate that these documents are privileged and, as a result, Mr. Carrato is ordered to produce these documents to plaintiffs.

         Doc. No. 117: Monsanto claims that this document is a draft internal document regarding Genuity Products approval status in key export markets, and contains Mr. Carrato's legal comments and revisions. Monsanto further states that the document is marked “FOR INTERNAL INFORMATION ONLY - NOT FOR EXTERNAL DISTRIBUTION.” However, as we have observed above, personal, confidential, or private information is not necessarily privileged, and does not automatically equate to “nondiscoverable.” Based on the content and the context of this document, there is no evidence of legal advice within the document or that legal advice was sought or given. The undersigned find that this document provides a regulatory update containing factual and business information, rather than legal advice, and therefore, it is not privileged. Mr. Carrato's deposition testimony supports this finding.[50]

         Doc. Nos. 123-26 and 128-30: Monsanto claims that these documents concern the “Monsanto Pledge” and stewardship of product launches. Privilege log entries 123-25 and 128-30 identify Mr. Carrato as both the author and the lawyer providing the alleged legal advice contained therein. In contrast, privilege log entry 126 identifies Mr. Carrato as the author of the document but not necessarily the author of the legal advice allegedly contained therein. The privilege log does not provide any information to explain the discrepancy. In any event, these documents appear to be predominantly business-related and contain edits that reflect mere word-smithing as opposed to the provision of legal advice. As such, they are not privileged.

         Doc. No. 127: Monsanto claims that this document is a draft pledge stewardship summary that contains legal comments and revisions relating to Monsanto stewardship efforts and the status of the European Union regulatory system. While the privilege log identifies Mr. Carrato as the document's author, it does not identify Mr. Carrato as the person providing the legal comments and revisions. Based on the content and the context of this document, there is no evidence of legal advice within the document or that legal advice was sought or given. The undersigned find that this document provides business information that is factual in nature concerning Monsanto stewardship efforts, and does not reference legal principles or provide legal advice. The undersigned further note that although Monsanto's privilege log specifically states that this document “contains legal comments/revisions relating to … status of EU regulatory system, ” the document only refers to the EU system in passing and does not reflect any legal analysis or provide legal advice. Accordingly, the document is not privileged.

         Doc. No. 133: Monsanto claims that this is a draft document regarding “product launch stewardship policy (Biotechnology Industry Organization, Food and Agriculture Section)” that contains Mr. Carrato's legal comments and revisions. On its face, the document appears to have been prepared for a third-party industry group rather than Monsanto, and Monsanto's privilege log does not state otherwise or provide any information to the contrary. The document does not appear to reflect legal advice from an attorney (Mr. Carrato) to his client (Monsanto), nor does it evidence a request for legal advice by Monsanto. In fact, the document only refers to BIO's policies and objectives and does not refer to Monsanto whatsoever. Accordingly, the undersigned conclude that Monsanto has not met its burden with regard to establishing that this document is privileged.

         Doc. No. 144: Monsanto claims that this document is a draft document regarding Roundup RReady2Yield soybeans that contains Mr. Carrato's legal revisions concerning stewardship of the product and analysis of functioning regulatory systems. Based on the content and the context of this document, and with Mr. Carrato's deposition testimony in mind, [51] the undersigned find that this document predominantly concerns business information that is factual in nature, as well as business advice concerning Monsanto stewardship efforts, and it is therefore, not privileged.

         Doc. Nos. 159-60: Monsanto claims that these documents are draft updates regarding YieldGard Plus and YieldGard Plus with Roundup Ready Corn 2 that contain Mr. Carrato's legal edits concerning regulatory approvals for traits. Based on the content and the context of this document, and with Mr. Carrato's deposition testimony in mind, [52] the undersigned find that these documents predominantly concern business information that is factual in nature. There is no active communication of legal advice in these documents, nor is there any evidence that legal advice was sought by Monsanto. Mr. Carrato's redlines are simple editorial changes. Accordingly, these documents are not privileged.

         Doc. No. 162: Monsanto claims this document is a draft document regarding the product benefits of Roundup RReady2Yield soybeans that contains Mr. Carrato's legal comments and revisions concerning yield potential, stewardship, and approval status. Based on the content and the context of this document, and with Mr. Carrato's deposition testimony in mind, [53] the undersigned find that this document predominantly concerns business information that is factual in nature, as well as business advice concerning Monsanto stewardship efforts, and it is therefore, not privileged.

         For the reasons described, the undersigned find the attorney-client privilege does not protect, and Mr. Carrato shall produce to plaintiffs, the documents specifically addressed above.

         IV. Confidential or Trade Secret Information

         Monsanto asserts that a number of documents responsive to the subpoenas contain Monsanto's confidential trade secret or commercial information, and should therefore be quashed under Fed.R.Civ.P. 45(d)(3)(B)(i)[54] and Minn. R. Civ. P. 45.03(c)(2)(A). Like the standards for attorney-client privilege, Judge O'Hara set forth the legal standards applicable to assertions of confidentiality in the January 27, 2017 order. The undersigned mention this fact to note that, prior to the majority of their briefing on the instant motions, Monsanto and Mr. Carrato were on notice of the burden they face of demonstrating that “a clearly defined and very serious injury” would come from disclosure of the documents.[55] As discussed below, Monsanto and Mr. Carrato have failed to meet this burden.

         For convenience, the applicable legal standards are repeated here. The Tenth Circuit applies the standards for a protective order under Fed.R.Civ.P. 26(c) in determining whether to quash a subpoena on the basis of trade secret/confidential information.[56] It is well established that “[t]here is no absolute privilege for trade secrets or similar confidential information.”[57] However, Rule 26(c) “confers broad discretion on the trial court to decide when a protective order is appropriate and what degree of protection is required.”[58] Upon a showing of good cause, the court “may issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including . . . requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a designated way.”[59] The person seeking protection over the information has the burden to show good cause for such protection.[60]

         The person seeking protection must first establish that the information sought is indeed a trade secret or other confidential research, development, or commercial information.[61] Next, the person seeking protection must show that disclosure of the information could be harmful.[62] To do this, it must demonstrate that disclosure would “result in a clearly defined and very serious injury, ”[63] such as showing the competitive harm that would befall it by virtue of the disclosure.[64] To establish such an injury under the good-cause standard, the person seeking protection must make “a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements.”[65]

         Only if these requirements are met does the burden then shift to the party seeking disclosure to establish that such disclosure is relevant and necessary to the action.[66] “The district court must balance the need for the trade secrets against the claim of injury resulting from disclosure.”[67] “If proof of relevancy or need is not established, discovery should be denied. On the other hand, if relevancy and need are shown, the trade secrets should be disclosed, unless they are privileged or the subpoenas are unreasonable, oppressive, annoying, or embarrassing.”[68] “It is within the sound discretion of the trial court to decide whether trade secrets are relevant and whether the need outweighs the harm of disclosure. Likewise, if the trade ...


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