Abbott Labs. v. Adelphia Supply USA
Abbott Labs. v. Adelphia Supply USA
2016 WL 11773895 (E.D.N.Y. 2016)
January 20, 2016

Amon, Carol Bagley,  United States District Judge

Third Party Subpoena
Protective Order
ESI Protocol
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Summary
Abbott requested a modification of the October 22, 2015 discovery order to permit it to use the information obtained from nonparties for purposes other than issuing subpoenas and suing new parties. The Court denied the request and adopted the Joint Modified Order, which requires any nonparty to whom this material is disclosed to agree in writing to the limitations set forth in the Joint Modified Order, and any further disclosure is to be marked as “Confidential.”
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ABBOTT LABORATORIES ET AL. Plaintiffs,
v.
ADELPHIA SUPPLY USA ET AL. Defendants
15-CV-5826 (CBA) (MDG)
United States District Court, E.D. New York
Filed January 20, 2016
Amon, Carol Bagley, United States District Judge

MEMORANDUM & ORDER

*1 Before the Court is a request arising out of its October 22, 2015, discovery order (the “Oct, 22 Discovery Order”) in this trademark-infringement case. (See D.E. # 75.) The Oct. 22 Discovery Order required the defendants in this action to produce to plaintiffs (“Abbott”) the names, addresses, and contact information of suppliers and customers of the international FreeStyle diabetic test strips at issue in the case. (See id.) It also permitted Abbott to request this information from nonparties via nonparty subpoenas. (See id.) Defendants requested that protective measures apply to these disclosures, and the Oct. 22 Discovery Order therefore restricted how Abbott could use that information and permitted it to be designated as for “Attorneys’ Eyes Only.” (See id.)
 
On November 12, 2015, Abbott requested a modification of the Oct. 22 Discovery Order to permit Abbott to use the information for purposes other than issuing subpoenas and suing new parties and to remove the “Attorneys’ Eyes Only” designation. (D.E. # 140.) Select defendants—collectively, the “opposing defendants”—oppose that request in various ways. On November 12, 2015, defendants H&H Wholesale Services, Inc., Howard Goldman, and Lori Goldman (collectively, “H&H”) asked “the Court once again to enter a protective order which places more restrictive limitations on the use of information.” (D.E. # 137). H&H filed an additional response in opposition on November 18, 2015. (See D.E. # 150). Also on November 18, 2015, defendants Save Rite Medical.com, Marc Kaplan, Matrix Distributors, Inc., Christopher Benevent, Seth Grumet, Dream Cereal Inc., Douglas Hauck, Paul Leight, Kevin Singer, Delray Marketing LLC, Steve Michaels, Globe Wanted, Product Performance Company, Jerrold Herman, Stephen Herman, Saps Drug Wholesale, Nimish Amin, Rajesh Amin, and Vilas Amin (collectively, the “Save Rite defendants”) joined H&H's November 18 opposition, (see D.E. # 151), as did defendants Adelphia Supply USA, Yudah Neuman, Reuven Sobel, and Moses Neuman on November 25, 2015, (see D.E. # 166). On November 27, 2015, defendants Medical Discount Services, Inc., and Brian Mesika filed their own opposition. (See D.E. # 167).
 
On November 30, 2015, the Court held a hearing on these discovery requests. At the hearing, the Court denied H&H's request for a protective order. (See D.E. dated Dec. 1, 2015.) The Court then instructed Abbott to file a proposed modified discovery order (“Proposed Modified Order”) with the Court and to serve that Proposed Modified Order on all nonparties to whom Abbott had served nonparty subpoenas, along with a letter advising these nonparties that they have 10 days to file a response with the Court stating any objection to the Proposed Modified Order. (See id.)
 
Also at the hearing, Abbott's counsel and counsel for HMF Distributing, Inc., Wholesale Diabetic Supplies Inc., Ross Trager, Matthew Frank, Massalah Trading U.S.A. Ltd., and Saad Hassad (collectively, “the HMF defendants”) expressed optimism that they could reach an agreement on a joint modified discovery order (“Joint Modified Order”). The Court instructed those parties to confer and, if a Joint Modified Order could be agreed upon, instructed Abbott to seek the other defendants’ consent to that Joint Modified Order. (See id.)
 
*2 On December 3, 2015, Abbott filed its Proposed Modified Order, which it then served on all nonparties to whom it had delivered nonparty subpoenas. (See D.E. #213.) No nonparty filed any objection to the Proposed Modified Order with the Court.
 
Abbott and the HMF defendants conferred and reached a Joint Modified Order, which Abbott then circulated to the other defendants for their review and potential consent.[1] (See D.E. # 244.) Abbott then filed that Joint Modified Order with the Court on December 15, 2015. (Id.)
 
All affected parties have now had an opportunity to be heard on the scope and limits of the Oct. 22 Discovery Order. At stake is Abbott's ability to enforce its trademark and the efficiency and practicality of the current litigation, contrasted with the opposing defendants’ desire to protect their customer and supplier information from widespread dissemination.
 
Having weighed these important interests carefully, the Court determines that the Joint Modified Order agreed to by Abbott and the HMF defendants strikes the proper balance. This Joint Modified Order addresses the two key concerns expressed by the opposing defendants. First, it limits the scope of the information's dissemination by expressly restricting to whom materials can be disclosed. (See D.E. # 244-2 ¶ 6.) Second, it limits how the disclosed materials are used by enunciating specific permissible purposes, all centered around stopping the sale of international FreeStyle test strips domestically. (See id. ¶ 4.) Belying the opposing defendants’ central concern about the dissemination of this information to their competitors, the Joint Modified Order requires any nonparty to whom this material is disclosed to agree in writing to the limitations set forth in the Joint Modified Order. (See id. ¶ 6(g)–(h).) And in a compromise from Abbott's initial request, the disclosure previously permitted to be marked for “Attorneys’ Eyes Only” will remain “Confidential,” as will any further disclosure. (See id. ¶ 7.) Additionally, although the number of defendants makes universal consent near impossible, a number of the defendants consented to the Joint Modified Order and Abbott incorporated changes from some of the defendants who did not consent. (See D.E. # 244 at 1.)
 
The Court therefore adopts the Joint Modified Order as the Order of the Court, replacing the Oct. 22 Discovery Order. The parties are instructed that any further discovery disputes are to be addressed to the Honorable Marilyn D. Go, United States Magistrate Judge, and are reminded of their obligation under Local Rule 37.3(a) to attempt in good faith to resolve any discovery or nondispositive pretrial disputes prior to seeking judicial resolution. The Clerk of Court is advised that this Memorandum and Order resolves Docket Entries # 140 and 234.
 
*3 SO ORDERED.
 
Dated: January 19, 2016
 
Brooklyn, New York

Footnotes
Although the process the Court set forth at the hearing did not call for any additional submissions from H&H, H&H nonetheless filed a surreply on December 10, 2015, (see D.E. # 234), in which the Save Rite defendants predictably joined, (see D.E. # 237). This surreply repeated H&H's arguments from its many prior submissions and proposed H&H's own modified discovery order. Although this filing was not authorized, the Court has considered its arguments in issuing this Memorandum and Order and the attached Expedited Discovery Order.