*1 This case is before the undersigned pursuant to 28 U.S.C. § 636, the Rules of this Court, and Standing Order 13-02.

Now before the Court are Plaintiff's Motion to Compel and Motion for Interim Protective Order [Doc. 93] and the Parties' Joint Disputed Motion for Entry of a Protective Order [Doc. 122]. The parties appeared before the Court on December 7, 2021, for a motion hearing. Attorneys Daniel Hipskind, Erin McCracken, and Wayne Ritchie, II appeared on behalf of Plaintiff. Attorneys John Elder, Christopher Strongosky, and Anna Finger appeared on behalf of Defendant Caelum Biosciences, Inc. (“Caelum”). Attorney Jimmie Miller appeared on behalf of Defendant the Trustees of Columbia University in the City of New York (“Columbia”).[1] Accordingly, for the reasons explained below, the Court GRANTS Plaintiff's Motion to Compel as to Request for Production Nos. 1 & 4 [Doc. 93], the Court DENIES AS MOOT Plaintiff's Motion to Compel as to Request for Production Nos. 2 & 5 [Doc. 93], and the Court GRANTS IN PART AND DENIES IN PART the Parties' Joint Disputed Motion for Protective Order [Doc. 122].

I. FACTUAL AND PROCEDURAL BACKGROUND

Plaintiff filed its original Complaint with this Court on December 11, 2019 [Doc. 1]. Plaintiff filed the Second Amended Complaint [Doc. 61] on May 13, 2021, alleging breach of contract, conversion, tortious interference with contract, tortious interference with business relations, slander of title, unjust enrichment, misappropriation of trade secrets, and other claims against Defendant Caelum. This matter centers around a monoclonal antibody called 11-1F4 that researchers at The University of Tennessee Graduate School of Medicine discovered and began to develop into a treatment for amyloidosis—a rare and fatal disease. [Id. at ¶¶ 1–5]. Caelum has acknowledged that 11-1F4 originated at The University of Tennessee. [Id. at ¶ 2].

UTRF acquired all property and know-how rights relating to 11-1F4 directly from the researchers who first discovered 11-1F4 and its anti-amyloid properties. [Id. at ¶¶ 69–70]. Plaintiff alleges that “[w]ithout a license, sale, or any similar agreement between UTRF and Caelum, and without any compensation paid to UTRF, Caelum claims it owns ‘worldwide license rights’ to 11-1F4.” [Id. at ¶¶ 6, 153]. Caelum maintains that it received all the necessary right to commercialize 11-1F4 from Columbia University. [Id. at ¶¶ 20, 164–66]. Plaintiff asserts that The University of Tennessee collaborated with Plaintiff on the development of 11-1F4, but Columbia University never had rights to commercialize the materials, know-how, and research data at issue here. [Id. at ¶¶ 82–100].

Shortly after the parties conducted the Rule 26(f) Scheduling Conference, Plaintiff served its first discovery requests, including the four Document Requests at issue. [Doc. 94-1]. Caelum filed a Motion for Protective Order and Stay of Discovery on May 14, 2021 [Doc. 64]—the day Caelum's responses to the initial discovery requests were due. United States District Judge Charles Atchley entered an Order denying Caelum's Motion for Protective Order and Stay of Discovery on June 2, 2021. [Doc. 69]. On June 17, 2021, Caelum provided written objections and responses to Plaintiff's First Set of Requests for Production. [Doc. 94-2].

*2 Plaintiff states that it sent Caelum's counsel a draft proposed protective order on April 12, 2021 in anticipation that discovery would entail the production of documents that the parties consider confidential. [Doc. 94 at 3]. Plaintiff states that Caelum did not respond until June 10, 2021. [Id.]. Plaintiff proposed the parties jointly request an interim Protective Order limiting access to documents designated Confidential to outside counsel of record, and that the documents only could be used for this case. [Doc. 94-3 at 2]. Plaintiff states that it proposed the parties jointly propose an interim Protective Order mirroring language from the District of Delaware's Local Rule 26.2 during two meet and confer calls, but Caelum refused. [Doc. 94-1 at ¶¶ 5, 7]. Plaintiff states that Caelum has yet to produce a single document in connection with this case. [Id. at ¶ 8]. These circumstances lead to Plaintiff filing the Motion to Compel [Doc. 93]. On August 27, 2021, the Parties filed a Joint Disputed Motion for Entry of a Protective Order [Doc. 122].

II. ANALYSIS

The Parties agree that a Protective Order governing the disclosure of confidential information during discovery in this action is necessary. The Parties agree on all provisions of the Proposed Protective Order, except for Plaintiff's request for the inclusion of a patent prosecution bar. Plaintiff's Proposed Protective Order [Doc. 122-1] and Defendants' Proposed Protective Order [Doc. 122-2] were filed concurrently with the Motion for Entry of a Protective Order. The Court will address the Motion for Entry of a Protective Order first followed by the Motion to Compel.

A. Motion for Entry of a Protective Order

Federal Rule of Civil Procedure 26(c) governs protective orders. That Rule authorizes a court to enter an order “to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P. 26(c)(1). Among the types of relief illustrated in subsection (c) is, in subsection (G), “requiring that a trade secret or other confidential research, development, or commercial information not be revealed or be revealed only in a specified way.” Fed. R. Civ. P. 26(c)(1)(G). A party requesting a protective order must establish good cause for such an order. Eagle v. Hurley Med. Ctr., 292 F.R.D. 466, 478 (E.D. Mich. 2013). “This Rule confers broad discretion on the trial court to decide when a protective order is appropriate and what degree of protection is required.” Id. (citing Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36 (1984)).

As a threshold matter, the Court agrees with the parties that a Protective Order governing the confidential treatment of certain documents and information to be exchanged by the parties during discovery in this action is necessary. The Court finds that good cause for a Protective Order has been established, because discovery in this action will involve the parties' confidential research, development, and commercial information. See Shane Group, Inc. v. Blue Cross Blue Shield, 825 F.3d 299, 305 (6th Cir. 2016) (“ ‘Secrecy is fine at the discovery stage, before the material enters the judicial record.’ Thus, a district court may enter a protective order limiting the use or disclosure of discovery material upon a mere showing of ‘good cause.’ ”) (quoting Baxter Int'l, Inc. v. Abbott Labs., 297 F.3d 544, 545 (7th Cir. 2002)).

However, as mentioned above, the parties disagree as to Plaintiff's request for the inclusion of a patent prosecution bar to protect its sensitive technical information regarding the 11-1F4 antibody as well as its other similar monoclonal antibody technologies from inadvertently being incorporated into any patent applications Defendants may either have pending or that they may file in the near future. See [Doc. 122-1 (Exhibit A - Plaintiff's Proposed Protective Order)]. Paragraph 11 of Plaintiff's Proposed Protective Order contains the patent prosecution bar at issue and provides:

*3 [Doc. 122-1 at ¶ 11]. Defendant Caelum argues that the proposed patent prosecution bar would be unduly burdensome and would “significantly hind[er] Caelum's ability to both defend itself and at the same time, prosecute patents for its inventions of life-saving medicines.” [Doc. 122 at 15].

“Despite provisions in a protective order that specify that information designated as confidential may be used only for purposes of the current litigation, courts recognize that ‘there may be circumstances in which even the most rigorous efforts of the recipient of such [sensitive] information to preserve confidentiality in compliance ... with a protective order may not prevent inadvertent compromise.” Applied Signal tech., Inc. v. Emerging Mkts. Commc'ns, No. C-09-02180 SBA (DMR), 2011 U.S. Dist. LEXIS 97403, at *6 (N.D. Cal. Jan. 20, 2011) (quoting In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010)). Courts “recognize ... that because even competitors acting in good faith ‘cannot simply purge selected information from their memory, the risk is that they may later use the knowledge gained from the confidential material, however inadvertently, in the prosecution of future patents.” Front Row Techs., LLC v. NBA Media Ventures, LLC, 125 F. Supp. 3d 1260, 1275 (D.N.M. 2015) (discussing law regarding patent prosecution bars) (quoting Applied Signal, 2011 U.S. Dist. LEXIS 97403, at *11–12).

“Patent prosecution bars protect against this risk by prohibiting the recipients of a party's confidential technical information from engaging in patent prosecution-related activities concerning the subject matter of the patents in question.” Front Row, 125 F. Supp 3d at 1275–76 (citing 60 Am. Jur. 2d Patents § 768). As purported by Plaintiff, patent prosecution bars have been applied in cases other than patent infringement actions. See, e.g., Edwards Vacuum LLC v. Hoffman Instrumentation Supply, Inc., No. 3:20-cv-1681-AC, 2020 LEXIS 235448, at *1–*2, *33–*34 (D. Or. Dec. 15, 2020) (applying patent prosecution bar to an expert witness in a case involving alleged misappropriation of trade secrets among other things); id. at *30 (“Courts in the Ninth Circuit and elsewhere have used ‘patent prosecution bars’ to prevent misuse of confidential technical information disclosed in litigation in subsequent patent prosecution activities.”); Torrey Pines Logic, Inc. v. Gunwerks, LLC, No.: 19-cv-02195-H-DEB, 2020 U.S. Dist. LEXIS 193340, at *8 (S.D. Cal. Aug. 24, 2020) (applying patent prosecution bar to case involving claims for declaratory judgment for a correction of inventorship and ownership of a patent and intentional interference with a contractual relationship among other things).

The Court notes there appears to be no express guidance from the Sixth Circuit Court of Appeals regarding patent prosecution bars, but the Federal Circuit Court of Appeals has previously said “the determination of whether a protective order should include a patent prosecution bar is a matter governed by Federal Circuit law.” Deutsche Bank, 605 F.3d at 1378 (Applying Federal Circuit law instead of Second Circuit law in patent prosecution bar because it implicated a substantive patent law issue.). “A party seeking a protective order carries the burden of showing good cause for its issuance. The same is true for a party seeking to include in a protective order a provision effecting a patent prosecution bar.” Id. (internal citation omitted). “In evaluating whether to grant a patent prosecution bar in the first instance, a court must be satisfied that the kind of information that will trigger the bar is relevant to the preparation and prosecution of patent applications before the PTO.” Id. at 1381.

*4 In Deutsche Bank, the Federal Circuit gave instruction for courts to determine the appropriateness of a patent prosecution bar. First, “a party seeking imposition of a patent prosecution bar must show that the information designated to trigger the bar, the scope of activities prohibited by the bar, the duration of the bar, and the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of proprietary competitive information.” Id. For the second step, “the party seeking an exemption from a patent prosecution bar must show on a counsel-by-counsel basis: (1) that counsel's representation of the client in matters before the PTO does not and is not likely to implicate competitive decisionmaking related to the subject matter of the litigation so as to give rise to a risk of inadvertent use of confidential information learned in litigation, and (2) that the potential injury to the moving party from restrictions imposed on its choice of litigation and prosecution counsel outweighs the potential injury to the opposing party caused by such inadvertent use.” Id.

The standard set by Deutsche Bank has been interpreted in two distinct ways by the district courts, but both require a two-step inquiry. “The majority of courts require the moving party to first show that there exists an unacceptable risk of inadvertent disclosure of confidential information, on a counsel-by-counsel basis, without a bar in place, and then balance that risk against the potential harm to the party against whom the bar is sought.” Intellectual Ventures I, LLC v. Lenovo Grp. Ltd., Nos. 16-cv-10860-PBS & 16-cv-10868-PBS, 2019 U.S. Dist. LEXIS 12833, at *6 (D. Mass. Jan. 25, 2019) (citing NeXedge, LLC v. Freescale Semiconductor, Inc., 820 F. Supp. 2d 1040 (D. Ariz. 2011). Under the minority approach, “the moving party must show that the proposed bar ‘reasonably reflect[s] the risk presented by the disclosure of proprietary competitive information.’ ” Intellectual Ventures, 2019 U.S. Dist. LEXIS 12833, at *6–7 (citing Deutsche Bank, 605 F.3d at 1381). “In determining reasonableness, the court looks to the following factors: ‘the information designated to trigger the bar, the scope of the activities prohibited by the bar, the duration of the bar, and the subject covered by the bar.’ ” Intellectual Ventures, 2019 U.S. Dist. LEXIS 12833, at *7 (citing Deutsche Bank, 605 F.3d at 1381). “[T]he burden then shifts to [the non-movant] to show that ‘counsel-specific balancing’ favors exemptions for particular counsel.” Intellectual Ventures, 2019 LEXIS 12833, at *7 (citing Front Row, 125 F. Supp. 3d at 1287).

“The significant difference between the two interpretations of Deutsche Bank is which party has the burden of proof on a counsel-by-counsel basis. The majority requires the moving party to prove the risk of inadvertent disclosure with respect to each attorney for the opposing side. By contrast, the minority requires the party against whom the bar is sought to seek exemptions for the bar on a counsel-by-counsel basis after the court has found an acquisition bar is warranted.” Intellectual Ventures, 2019 LEXIS 12833, at *7 (internal citations omitted). The Intellectual Ventures court viewed the majority approach as placing an unrealistic burden on the moving party and directly contradicting the Federal Circuit case law. See 2019 LEXIS 12833, at *7. Thus, the Intellectual Ventures court agreed with the minority approach, reasoning that:

*5 2019 LEXIS 12833, at *7–*8 (emphasis in original) (internal citations omitted).

The majority of UTRF's arguments for this Court to apply the minority approach are premised on the reasoning provided in Intellectual Ventures. UTRF notes that “[t]he law firm of Defendant Caelum's outside counsel's law firm currently has 51 attorney who specialize in both ‘Life Sciences’ and ‘Intellectual Property and Transactions.’ ” [Doc. 122 at 7]. Furthermore, “none of Caelum's outside counsel who have filed a notice of appearance in this action are admitted to practice before the United States Patent and Trademark Office. Defendant Columbia's outside counsel's firm currently employs 55 attorneys solely within its ‘Patent Prosecution and Counseling’ practice”. Id. Thus, Plaintiff requests that

Id. at 8.

Defendants argue for this Court to apply the majority approach, but also that the choice of approach is inconsequential because UTRF has failed to carry its burden to show good cause for the inclusion of a patent prosecution bar. For the reasons proffered by UTRF and contained in the analysis conducted in Intellectual Ventures, the Court finds the minority approach to be the more appropriate method. Furthermore, and for the reasons discussed below, the Court finds that the patent prosecution bar in UTRF's proposed protective order is reasonable, and good cause exists for its inclusion.

The Court has considered the factors outlined in Intellectual Ventures in regard to the first part of the two-part inquiry from Deutsche Bank, requiring “the moving party [to] show that the proposed bar ‘reasonably reflect[s] the risk presented by the disclosure of proprietary competitive information.’ ” Intellectual Ventures, 2019 U.S. Dist. LEXIS 12833, at *6–7 (citing Deutsche Bank, 605 F.3d at 1381). Again, those factors are: “the information designated to trigger the bar, the scope of the activities prohibited by the bar, the duration of the bar, and the subject covered by the bar.” Intellectual Ventures, 2019 U.S. Dist. LEXIS 12833, at *7 (citing Deutsche Bank, 605 F.3d at 1381).

UTRF argues that discovery in this matter will require it to produce “sensitive technical information.” [Doc. 122 at 8–9]. UTRF points to Defendant Caelum's first Request for Production, calling for production of “all Documents and Communications to identify [UTRF's] trade secrets ....” [Doc. 102-2 at 5]. As evidenced by this Request for Production, UTRF argues Defendants want to procure information relating to other technologies developed by The University of Tennessee (“UT”) and UTRF related to the production of monoclonal antibodies and in addition to the 11-1F4 antibody-related technology. UTRF stated that there are currently three pending patent applications assigned to Defendant Columbia related to the 11—1F4 antibody.[3] Additionally, UTRF claims that in a letter from Caelum's outside counsel to UTRF, dated September 18, 2020, Caelum stated it “fully intends to obtain discovery against Attralus [a company exclusively licensing separate technology relating to monoclonal antibodies from UTRF], [UT], [UTRF], and against Dr. Wall, individually, related to Attralus's claimed technology and Dr. Wall's involvement in the pending litigation matter initiated by [UT] against Caelum.” [Doc. 46-2 at 2]. Furthermore, UTRF says Defendant Columbia also appears intent on placing UTRF's other monoclonal antibody research at issue in this case. UTRF says that this other monoclonal antibody research at issue requires a broader definition of the technology than the 11-1F4 technology discussed in the Second Amended Complaint. UTRF claims it has identified specific categories of non-technical trade secret information Defendants have put at issue in this case and as discussed above. The Court agrees with UTRF and finds that this is the kind of information that triggers patent prosecution bars. Thus, this factor weighs in favor of UTRF's position.

*6 Additionally, the Court finds that the duration of the requested patent prosecution bar—“during the pendency of this Action and for one year after its conclusion, including any appeals”—is reasonable and in line with standard Protective Orders issued by this and other courts. See Intellectual Ventures, 2019 U.S. Dist. LEXIS 12833, at *11 (Imposing a bar that “shall continue through the duration of this litigation, including any appeals, and for two years after its conclusion); Methode Electronics, Inc. v. DPH-DAS LLC, 679 F. Supp. 2d 828, 836 (E.D. Mich. Jan. 19, 2010) (permitting a one-year patent prosecution ban); Joint Stipulation and Modified Protective Order at ¶ 14, Dentsply Int'l, Inc. v. US Endodontics, LLC, Civil Action No. 2:14-cv-196 (HRG) (DHI) (E.D. Tenn. Aug. 5, 2014) (Doc. 58) (entering protective order ending two years after final termination of action). Therefore, the Court finds that the one-year ban in UTRF's proposed protective order is reasonable.

Regarding the scope of the UTRF's proposed patent prosecution bar, Defendants argue that the bar is unreasonably inhibiting because it encompasses any patent-related activity related to the monoclonal antibody information that will be subject to discovery in this matter. Defendants make this objection without citation to any case law or proffering of any alternative language that would limit the scope of the proposed bar. The Court notes that—as UTRF argues—none of Defendant Caelum's outside counsel who have filed a notice of appearance in this action are admitted to practice before the United States Patent and Trademark Office, and none of the attorneys who are so admitted have been identified. Because the Court applies the minority approach and finds that a patent prosecution bar is appropriate here, the burden shifts to Defendants if they wish to exempt one or more attorneys on a counsel-by-counsel basis from the prosecution bar, such that those counsel would be able to both view UTRF's technical information and work on Defendants' patent prosecutions. The Court finds that the scope of the proposed patent prosecution bar is not unreasonable as it is limited to the “prosecution of any patent application pertaining to the field of genetically engineering monoclonal antibodies or production of monoclonal antibodies,” and Defendants have not identified any specific counsel to be exempted from the bar; however, the Court notes they are able to do so.

Lastly, the Court finds the burden placed on Defendants by the imposition of a patent prosecution bar does not outweigh the risk of inadvertent disclosure or improper use of UTRF's confidential information. See Front Row, 125 F. Supp. 3d at 1276.

Front Row, 125 F. Supp. 3d at 1276 (quoting In re Deutsche Bank, 605 F.3d at 1381).

UTRF argues that there are three patents assigned to Defendant Columbia that are being prosecuted before the UPTO by attorneys of the law firm McCormick, Paulding & Huber, PLLC; there are no public records connecting Defendant Columbia's outside counsel of record in this action with any patent applications relating to 11-1F4, and during the parties' meet and confer on this issue, Defendant Columbia did not identify any prejudice it would suffer should the Court imposed the proposed prosecution bar. In regard to Defendant Caelum, UTRF argues that it has not identified any specific patent applications during the parties' meet and confers, and again, none of Defendant Caelum's counsel of record are admitted to practice before the USPTO. Defendant Caelum has not yet identified any counsel to be precluded from the proposed patent bar. Defendant Caelum argues that its interest in selecting attorneys with familiarity with the field of technology at issue in this matter would be severely inhibited because its counsel of record would be unable to consult with certain, unnamed patent prosecution attorneys if the bar were to be imposed. The Court finds that this does not outweigh UTRF's interest in ensuring that its confidential technical information is not incorporated into Defendants' patent applications. Again, the Court notes that Defendants have not yet identified any particular attorneys to be exempted from the patent bar. Therefore, the Court finds the burden on Defendants does not outweigh UTRF's interests to protect its confidential information in this matter.

*7 Accordingly, the Court will enter UTRF's proposed Protective Order.

B. MOTION TO COMPEL

Before turning to the specific relief sought in the Motions, the Court will begin with Federal Rule of Civil Procedure 26, which governs discovery. Federal Rule of Civil Procedure 26(b)(1) provides as follows:

Courts have explained that the “scope of discovery under the Federal Rules of Civil Procedure is traditionally quite broad.” Meredith v. United Collection Bureau, Inc., 319 F.R.D. 240, 242 (N.D. Ohio 2017) (quoting Lewis v. ACB Bus. Serv., Inc., 135 F.3d 389, 402 (6th Cir. 1998)). Courts have cautioned, however, that “[d]iscovery requests are not limitless, and parties must be prohibited from taking ‘fishing expeditions’ in hopes of developing meritorious claims.” Bentley v. Paul B. Hall Reg'l Med. Ctr., No. 7:15-CV-97-ART-EBA, 2016 WL 7976040, at *1 (E.D. Ky. Apr. 14, 2016). “[T]he [C]ourt retains the final discretion to determine whether a discovery request is broad or oppressive.” Id. (citing Surles v. Greyhound Lines, Inc., 474 F.3d 288, 305 (6th Cir. 2007)).

Additionally, pursuant to Rule 37 of the Federal Rules of Civil Procedure, a party may move the Court to enter an order compelling an inspection of documents, where a party has failed to permit such inspection. See Fed. R. Civ. P. 37(a)(3)(B)(iv). In the instant motion to compel, UTRF requests that the Court enter an Order compelling Defendant Caelum to produce all documents responsive to Plaintiff UTRF's First Set of Requests for Production of Documents and Things Nos. 1, 2, 4, and 5. UTRF states that these Requests were first served on Caelum on April 14, 2021, it has been more than a month since the Court issued its June 2, 2021 Order denying Caelum's request for a protective order regarding the Requests, and Caelum has yet to produce a single responsive document.

The Court notes that at the motion hearing, the parties resolved their issues surrounding Request for Production Nos. 2 & 5. Therefore, the Court denies UTRF's motion to compel as to Request for Production 2 & 5 as they are moot. The Court turns now to the remaining Request for Production Nos. 1 & 4.

Below are UTRF's Request for Production Nos. 1 & 4 and Caelum's responses thereto.

The Court grants Plaintiff's Motion to Compel as to Request for Production Nos. 1 & 4 as they are relevant, and the motion is well-taken. The Parties are ordered to meet and confer regarding timing for Defendant to respond to Request for Production Nos. 1 & 4.

I. CONCLUSION

Accordingly, the Court GRANTS Plaintiff's Motion to Compel as to Request for Production Nos. 1 & 4 [Doc. 93]. The Court DENIES AS MOOT Plaintiff's Motion to Compel as to Request for Production Nos. 2 & 5 [Doc. 93]. Lastly, the Court GRANTS IN PART AND DENIES IN PART the Parties' Joint Disputed Motion for Protective Order [Doc. 122].

IT IS SO ORDERED.

ENTER: