I. BACKGROUND

*1 This is a nonparty discovery dispute arising out of Carrum Technologies, LLC v. FCA, Case No. 18-cv-1646-RGA (D. Del.) (“Carrum v FCA”), which is pending in the District of Delaware before Judge Richard G. Andrews. (ECF No. 1, PageID.1-2). In Carrum v. FCA, Carrum accuses FCA US, LLC (Fiat-Chrysler, or “FCA”) of infringing Carrum's United States Patent Nos. 7,512,475 (“the '475 patent”) and 7,925,416 (“the '416 patent”) (collectively, the “Asserted Patents”). The Asserted Patents generally relate to adaptive cruise control (“ACC”) systems in vehicles.

Plaintiff Carrum Technologies, LLC (“Carrum) moved to compel compliance with a subpoena against nonparty Robert Bosch LLC (“Bosch”). ECF No. 5 (under seal). Bosch responded to the motion to compel and moved to strike a declaration supporting Carrum's motion to compel. ECF Nos. 11 and 14. Bosch also moved for a protective order prohibiting Carrum from disclosing its protected materials to Carrum's expert, Dr. Shaver. ECF No. 15. All three motions have been referred to a Discovery Master. ECF No. 30.

Upon submission of response and reply briefs on all three motions, the Discovery Master scheduled a preliminary conference. At the preliminary conference, counsel for Carrum and Bosch agreed to engage in facilitated discussions with the Discovery Master to seek a negotiated resolution of the motions. The mediated settlement discussions did not yield an agreed-upon resolution of the motions. Consequently, counsel and the Discovery Master proceeded to oral argument on the pending motions.

Having considered the motions, briefs, and arguments of counsel, the Discovery Master has determined that no further argument of counsel is necessary and hereby issues this Report and the following Recommendations.

II. CARRUM'S MOTION TO COMPEL (ECF No. 5)

a. Background

Bosch supplies components of the ACC systems contained in vehicles sold by FCA which are at issue in Carrum v FCA. Carrum sought third-party discovery from Bosch after FCA's counsel advised that “the technical information Carrum needs” to prove infringement ‘in [Carrum v FCA] is with Bosch,’ and is not in FCA's possession.” ECF No. 5, PageID.126. In response to Carrum's subpoenas, Bosch committed to producing responsive, non-privileged documents in response to many or most of Carrum's requests. Bosch has produced roughly 113,000 pages of responsive documents through 9 productions (including four separate technical productions). However, Bosch refused to produce it “highly confidential source code.” ECF No. 5-7, PageID229. Instead, Bosch stated that it “will provide source code information, which describes the functionality of the source code, and as needed, Bosch is willing to provide answers to questions via a declaration by a Bosch employee knowledgeable about Bosch's highly confidential source code and/or a deposition, if necessary.” Id. Carrum's motion seeks to compel both documents and source code from Bosch. ECF No. 5, PageID.134.

b. The Technology of the Asserted Patents

*2 Cruise control systems for automotive vehicles are widely known. ECF No. 5-2, '475 Patent at col. 1 l. 14–15 and ECF No. 5-3, '416 Patent at col. 1 l. 17–20. ACC represents an advance in cruise control technology which allows a vehicle to maintain a set speed when appropriate and adapt to moving traffic through object-sensing technology. ECF No. 5-2, '475 Patent at col. 1 1 ll. 21–26 and ECF No. 5-3, '416 Patent at col. 1 ll. 23–33. The Asserted Patents address what Carrum claims to have been a deficiency in previous iterations of ACC technology, namely, the ability of ACC systems to operate safely in a turn or curve. ECF No. 5, PageID.128. The Asserted Patents disclose “a system and method for enabling a vehicle having adaptive cruise control to reduce its speed in a turn according to the vehicle's position within the turn as well as ignoring objects detected during the turn that are not in the vehicle's path.” ECF No. 5-2, '475 Patent, Abstract at [57] and ECF No. 5-3, '416 Patent, Abstract at [57].

c. Carrum's Infringement Claims

Carrum asserts that, to prove infringement of the Asserted Patents, it must be able to demonstrate how the accused ACC systems work, including how the ACC system uses specific variables. More specifically, Carrum claims it needs technical information showing “how the ACC system ‘determines[es] the vehicle path,’ and what inputs it relies on to reduce the vehicle speed when the vehicle is in a turn.” ECF No. 5, PageID.132. According to Carrum's expert, “claim 7 of the '475 patent (which depends from and incorporates the limitations of claim 6) is directed to a ‘method of controlling a vehicle’ including ‘detecting a change in vehicle lateral acceleration based on a change in the measured lateral acceleration’ and ‘determining the vehicle path based on the detected change in lateral acceleration.’ ('475 patent at 8:35–56.)” ECF No. 5-17, PageID.307.

Bosch argues that Carrum has all the information from Bosch necessary to present its patent infringement allegations because the documents it has already produced show how the Bosch's ACC system performs the functions of determining a vehicle's path (including the inputs used by the Bosch ACC system) and controlling vehicle speed in a turn. ECF No. 14, PageID.885. It is also noteworthy that Bosch further contends these documents demonstrate that the Bosch ACC system does not use lateral acceleration to predict the vehicle's path, nor does it determine or detect a change in lateral acceleration. Id; see also ECF No. 14-2, PageID.908, ¶ 17 and PageID.910, ¶ 20. In other words, Bosch's system uses longitudinal acceleration (with yaw rate[1] and steering wheel angle sensors) in a curve, not lateral acceleration or change in lateral acceleration as described in the Asserted Patents.

Carrum asserts that although Bosch has produced documents describing the functional requirements for the components at issue, it still needs the technical details of the systems supplied by Bosch, including the source code revealing the technical operation of the ACC components at issue. ECF No. 5, PageID.130-31. According to Carrum, “Bosch's technical documents about its components, such as source code and detailed technical specifications, are necessary evidence in Carrum's infringement case—as a practical matter, Bosch's technical documents may be, for the vehicles using Bosch components, the most important documents describing how the accused systems operate.” ECF No. 5, PageID.134.

Bosch disagrees: “no claim of either asserted patent requires an explanation of the computations performed to determine a vehicle's path. Thus, it is flatly untrue that ‘in order to prove infringement of the Asserted Patents, Carrum must be able to demonstrate, as a technical matter, how the accused ACC systems work, including how the ACC system uses specific variables (e.g. lateral acceleration, yaw rate) to determine the vehicle's path.”

*3 With this, Carrum disagrees: “Bosch ... fails to persuasively argue that the documents it has produced to date sufficiently demonstrate how the accused systems operate.” ECF No. 32, PageID.1574. Carrum asserts that they may not provide complete documentation of all variables involved in path prediction, and the required level of detail would only be reflected in the source code itself. ECF No. 32, PageID.1574-75. Carrum further asserts that declarations and depositions are inadequate because human testimony is unreliable for proving up the contents and functions of a complex source code, and it should not be forced to rely on Bosch witnesses' interpretation of Bosch's source code in lieu of the code itself. ECF No. 32, PageID.1575-76.

d. Legal Standard

Under the Federal Rules, parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case. FED. R. CIV. P. 26(b)(1). In general, “[a] subpoena to a third party under Rule 45 is subject to the same discovery limitations as those set out in Rule 26.” United States v. Blue Cross Blue Shield of Michigan, No. 10-CV-14155, 2012 WL 4513600, at *5 (E.D. Mich. Oct. 1, 2012). Under Rule 26, the court may “for good cause, issue an order to protect a party ... from ... undue burden or expense [by] 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. Proc. 26(c)(1)(G). A Court should limit discovery if the discovery sought is available through less burdensome means. Morrow v. Air Ride Techs., Inc., No. IP-05-113, 2006 WL 559288, at *1 (S.D. Ind. Mar. 6, 2006).

Under Rule 45, the Federal Rules further provide that a party or attorney responsible for issuing and serving a subpoena must take reasonable steps to avoid imposing undue burden or expense on a person subject to the subpoena, and the court for the district where compliance is required must quash or modify a subpoena that subjects a person to undue burden. See Fed. R. Civ. P. 45(d)(1) and (3)(A)(iv).[2] The court court may also quash or modify a subpoena (without a separate showing of undue burden) if the subpoena requires “disclosing a trade secret or other confidential research, development, or commercial information.” Fed. R. Civ. P. 45(d)(3)(B)(i).

To evaluate whether the burden of compliance with a subpoena is undue, the Sixth Circuit has held that the Court must weigh “the likely relevance of the requested material ... against the burden of producing the material.” Braxton v. Heritier, No. 14-12054, 2015 WL 5123613 (E.D. Mich. Aug. 31, 2015) (quoting EEOC v. Ford Motor Credit Co., 26 F.3d 44, 47 (6th Cir. 1994)). See also: Truswal Systems Corp v. Hydro-Air Engineering, Inc., 813 F.2d 1207, 1210 (Fed. Cir. 1987) (internal citation omitted) (the court must balance “the relevance of the discovery sought, the requesting party's need, and the potential hardship to the party subject to the subpoena.”). The party seeking disclosure must “establish that the information is sufficiently relevant and necessary to his case to outweigh the harm disclosure would cause to the person from whom he is seeking information.” 8 C. Wright & A. Miller, FEDERAL PRACTICE & PROCEDURE: CIVIL § 2043 (3d ed. 1998) (emphasis added); 7 J. MOORE'S FEDERAL PRACTICE § 34.03 (3d ed. 2010). Both Carrum and Bosch agree that “the burden rests upon the party seeking disclosure to establish that the trade secret sought is relevant and necessary to the prosecution or defense of the case.” See ECF No. 14, PageID.881-82 and ECF No. 32, PageID.1574.

*4 As noted by Carrum, “[T]here is no absolute privilege for trade secrets and similar confidential information.” Federal Open Market Committee v. Merrill, 443 U.S. 340, 362 (1979) (quoting 8 C. Wright & A. Miller, Federal Practice and Procedure § 2043, p. 300 (1970)). Nevertheless, courts have also recognized that that “source code requires additional protections to prevent improper disclosure because it if often a company's most sensitive and most valuable property.” Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1300 n.13 (Fed. Cir. 2016); see also Generac Power Systems, Inc. v. Kohler Co., No. 11-cv-1120, 2012 WL 2049945, at *2 (E.D. Wisc. June 6, 2012) (“source code for programs is often one of the most valuable assets a company possesses”). In appropriate circumstances, courts have held that for both parties and non-parties, depositions of an engineer employed by the source code owner, demonstrations of the software at issue, and production of software manuals can be appropriate substitutes for the production of source code. See Realtime Data, LLC v. MetroPCS Texas, LLC, No. 12-cv-01048, 2012 WL 1905080, at *3 (S.D. Cal. May 25, 2012) (Ex. 7); Generac Power, 2012 WL 2049945, at *2.

e. Bosch's Source Code

Bosch argues throughout its motion, and Carrum has not disputed, that Bosch's source code is extremely valuable, highly confidential, and proprietary. Bosch submits that it is an industry leader in the autonomous driving market, and its ACC source code forms the foundation of its autonomous driving technologies. See ECF No. 14, PageID.876-87 and ECF No. 14-2, Declaration of Bosch Sr. Vice President, Kay Stepper, at ¶ 5. Bosch has invested hundreds of millions of dollars to develop its technology. Id. The technology and functionality developed by Bosch in its ACC features are unique and not available to other competitors. Id. at ¶ 10. Bosch has also outlined the substantial and advanced security measures it has maintained to maintain the security and security of its source code. Id. at ¶ 7

Carrum does not dispute that Bosch's documents and source code are “trade secret or other confidential research, development, or commercial information” within the meaning of Fed. R. Civ. P. 45(d)(3)(B) and that their disclosure might be harmful to Bosch. ECF No. 5, PageID.135. Considering the evidence and arguments presented by both sides, as summarized above, I find that disclosure of Bosch's source code to actual or potential competitors not only “might be harmful to Bosch,” but there is a reasonable possibility that it could be extremely harmful and prejudicial to Bosch and its competitive position in the autonomous driving industry.

f. Analysis re: Bosch Technical Documents

As noted above, Carrum's Motion seeks to compel both technical documents and source code from Bosch. With respect to the request to compel production of technical documents, Bosch claims that it has fully responded to Carrum's subpoenas by either (1) producing all responsive documents within its possession, custody, and control, after a reasonably diligent search or (2) advising Carrum that no responsive documents exist. ECF No. 14, PageID.883. Although Carrum contends that Bosch has not produced technical documents which adequately describe the functionality of the relevant Bosch components at the granular level of source code, that may be because no such documents exist. In any event, Carrum has not identified any specific documents that Bosch has allegedly withheld from its production or provided additional details concerning what additional documents (as distinguished from source code) it allegedly needs from Bosch. Further, Carrum has not suggested any lack of candor by Bosch in responding to the subpoenas that could support an allegation that Bosch has not produced all its responsive documents. Consequently, it appears that there are no documents to compel from Bosch.

g. Analysis re: Bosch Source Code

*5 While acknowledging that disclosure of Bosch's source code might be harmful to Bosch, Carrum contends that the source code is necessary for it to prove its infringement claims, that Bosch is overstating its security concerns, and the protective order already in place in the Delaware Carrum v FCA lawsuit (the “Protective Order”) are sufficient to address its concerns. In a similar patent infringement case against FCA, the plaintiff, Velocity Patent LLC, made the same arguments in seeking to compel Bosch to produce its source code. See ECF No. 14-9, Velocity v. FCA, No. 13-cv-08419, Order on Velocity's Motion to Compel, D.I. 216, at *6 (N.D. Ill. Nov. 2, 2017). In that case, the court concluded that considering potentially adequate alternatives, “we are not inclined to require that Bosch disclose its source code at this time.” Id.

In Velocity v FCA, the court first noted “we are not persuaded by Velocity's argument that the protective order in place should address all of Bosch's concerns. Bosch was not involved in the drafting of that protective order and is not satisfied with the terms.” Id. at *6. Here, as in Velocity v. FCA, Bosch was not involved in the drafting of the Protective Order and is not satisfied with the terms. ECF No. 14, PageID.878 and ECF No. 14, PageID.896-97.

In Velocity v. FCA, the court continued:

Velocity v. FCA, at *6.

Here, Bosch argues that disclosure of its source code to any competitor or potential competitor, even under the Protective Order, would be an undue burden. “Once seen, source code cannot be unseen. After an expert reads Bosch's source code and supporting documents, knowledge thereof may also be shared with Bosch's competitors, compromising Bosch's competitive advantage. See BASF Corp. v. United States, 321 F. Supp. 2d 1373, 1380 (C.I.T. 2004) (“It is very difficult for the human mind to compartmentalize and selectively suppress information once learned, no matter how well-intentioned the effort may be to do so.”).” ECF No. 14, PageID.889. See also U.S. Gypsum Co. v. Lafarge North America, Inc., No. 03 C 6027, 2004 WL 816770 (N.D. Ill. Mar. 2, 2004) (“Although a person may, in good faith, attempt to segregate knowledge learned in confidentiality during litigation, it would be difficult for a person ... to segregate any knowledge gained in this case from future analyses provided in his role as a consultant.”). Bosch's concern about disclosure of its source code to any competitor or potential competitor, even under the Protective Order, is well placed.

Carrum contends that Velocity v. FCA is distinguishable because here Bosch's source code would not be exposed to any “vast group of people” – only Dr. Gregory Shaver, a professor at Purdue University retained by Carrum's counsel as a technical expert. ECF No. 5, PageID.145. Carrum asserts that Dr. Shaver is “a career academic whose research is focused on commercial vehicles, not passenger cars” and that neither Dr. Shaver nor Purdue “work or consult for any competitors of Bosch.” ECF No. 5, PageID.145 and ECF No. 32, PageID.1578. Bosch, however, does not view its competition in the autonomous driving industry or Dr. Shaver's work so narrowly. “[C]ompetitors in this field include ‘car and truck manufacturers, traditional automotive suppliers, and non-traditional suppliers, such as Peloton Technology.’ ” ECF No. 14, PageID.890, citing ECF No. 14-2, PageID.906. Ex. 1 at ¶ 10. Bosch points to numerous references in Dr. Shaver's CV showing his work in the autonomous driving industry, including autonomous driving research with Peloton Technology -- a company that formerly implemented autonomous driving technology for truck platooning). ECF No. 14, PageID.890. Bosch further contends that the distinction between passenger cars and commercial vehicles is irrelevant. “Dr. Shaver is working with direct competitors on autonomous vehicles. Whether those vehicles are passenger-specific is immaterial; the technology is the same.” ECF No. 14, PageID.890. I find that Dr. Shaver has worked for competitors of Bosch in the technology found in Bosch's trade secrets, that it is not unlikely that he could in the future work for other competitors, and that unless Dr. Shaver were foreclosed from working for Bosch competitors in the future, disclosure of Bosch's source code to Dr. Shaver poses a significant security risk that Bosch's confidential and trade secret information could be shared, directly or indirectly, even if inadvertently, with Bosch's competitors.

*6 Beyond the concerns about the adequacy of a protective order discussed by the court in Velocity v. FCA, Bosch has expressed significant additional concerns about the adequacy of the Protective Order in this case. Specifically, Bosch alleges that Carrum has violated multiple provisions of the Protective Order and has not adequately safeguarded Bosch's confidential information produced to date in this case. See ECF No. 14, PageID.878-880. The alleged violations include quoting portions of Bosch's source code materials in unprotected email correspondence, even after being requested not to do so, and failing to comply with the requirements for logging copies of paper and electronic copies of the source code documents. Id. Bosch also alleges that Carrum allowed Dr. Shaver to review Bosch's protected materials without Bosch's approval and before disclosing him as an expert in Carrum v. FCA, thus barring Bosch's ability to object to such disclosure. These allegations are also raised in Bosch's motion to strike Dr. Shaver's declaration (ECF No. 14, discussed in Section B, below[3]) and Bosch's motion for a protective order prohibiting Carrum from disclosing its protected materials to Dr. Shaver (ECF No. 15, discussed in Section B, below).

These allegations constitute further support for Bosch's concern that the Protective Order would not adequately safeguard Bosch's source code from public disclosure if produced to Carrum or its expert. In sum, like the court in Velocity v FCA, I am not persuaded by Carrum's argument that the Protective Order should address all of Bosch's concerns. Velocity v FCA at *6.

In turning to the determination of whether the Velocity subpoena would subject Bosch to undue burden, the Velocity v FCA court next found that Bosch had sufficiently demonstrated its concerns about disclosing the source code, a highly valued trade secret. Id. In Velocity v FCA the court weighed that burden, along with the fact that Bosch was not a non-party, against the alleged need for access to the source code itself and the availability of potentially adequate alternatives. There, as here, Bosch had offered to produce one of its source code engineers for deposition and offered to provide declarations on the source code and how it relates to the accused features. The court found “this is an adequate alternative to requiring Bosch to produce the source code as a whole” and denied Velocity's motion without prejudice. Id. “If, after good faith cooperation by both parties, Velocity is still not able to obtain the information it believes is necessary to prove its claims, the Court will revisit the issue.” Id.

Here, Carrum argues that “a declaration or deposition in lieu of source code is not an ‘adequate alternative,’ ... [and] would force Carrum to accept the recollection of a fallible human witness.” ECF No. 5, PageID.145. Of course, Bosch disagrees, and the Velocity court found these alternatives to be potentially adequate.

In addition to the proffered deposition and declarations as an alternative for producing Bosch's source code for review by Dr. Shaver, there is another alternative that should be more than “potentially adequate.” Specifically, should Carrum find there is reason to doubt the recollection or accuracy of the declarations and/or deposition testimony of the Bosch source code engineers on the Bosch source code and how it relates to the accused features, the Court could appoint an independent source code expert as a special master to review Bosch's source code to validate or refute the declarations and/or deposition testimony, subject to a new Protective Order between Carrum and Bosch, outlining the review and reporting procedures for the special master, as well as confidentiality designations for any declarations and depositions. Bosch has offered a review by a mutually agreeable expert as an alternative to having an actual or potential competitor review its source code. ECF No. 15, PageID 1109 and ECF No. 14, PageId.896-97.

h. The Aptiv Opinion

*7 I am mindful that Judge Grey ordered another FCA supplier, Aptiv, to produce documents and source code for modules integrated into FCA's ACC systems. Carrum Technologies LLC v. Ford Motor Co., No. 2:21-mc-51425-LVP-JJCG (E.D. Mich. Jan. 21, 2022)(the “Aptiv opinion”). In contrast to Bosch's extensive cooperation and document productions in this case, Aptiv refused to produce any documents in response to Carrum's subpoenas. Id. *4. Consequently, the Aptiv opinion was primarily directed at the relevance, need, and burden of producing the kinds of documents Bosch has already produced in this case, and was not as focused on the source code as with Carrum's present dispute with Bosch.

As to the burden, Aptiv argued that the requested discovery was unnecessarily burdensome because Aptiv carries a license authorizing it sale of component parts of the patented system, an argument Judge Grey found to be inappropriate in the context of a discovery motion. Id. *11. Aptiv is the successor by assignment to Delphi, which initially developed and held the Asserted Patents now owned by Carrum, which may explain why Aptiv devoted only a single paragraph of its opposition brief to its argument that source code is risky to produce. Case No. 2:21-mc-51425. ECF No. 11, PageID.490. Likewise, Judge Grey's opinion devoted only a single paragraph of his opinion to address that argument. Aptiv opinion, *12-13. Finally, Aptiv did not offer, and consequently Judge Grey did not consider any of the potentially adequate alternatives to source code production as Bosch has proposed here and as were involved in Velocity v. FCA. For these reasons, I find that the Velocity opinion provides better guidance for the consideration and resolution of the present motion than does the Aptiv opinion.

i. Findings and Recommendations on Carrum's Motion to Compel (ECF No. 5)

Considering the facts and arguments outlined above, and weighing the relevance of the discovery sought, Carrum's articulated need, and the actual and potential hardship to Bosch, I make the following findings and recommendations:

1) The Court should deny Carrum's motion to compel Bosch to produce its source code for review by Dr. Shaver or any actual or potential competitor of Bosch in the autonomous vehicle industry because granting the motion would constitute a burden on Bosch that outweighs the need for production requested by Carrum, and would therefore impose an undue burden on Bosch, and the Court should quash or modify Carrum's subpoenas pursuant to Fed. R. Civ. P. 45(d)(1) and (3)(A)(iv) accordingly.

2) This Court should, alternatively, exercise its discretion under Fed. R. Civ. P. 45(d)(3)(B)(i) to quash or modify Carrum's subpoenas to the extent they would require Bosch to disclose its source code, which constitutes “a trade secret or other confidential research, development, or commercial information,” to Dr. Shaver or any actual or potential competitor of Bosch engaged in the autonomous vehicle industry.

3) The discovery Carrum seeks is likely available through less burdensome means.

4) The following alternatives are likely to adequately satisfy Carrum's articulated need for source code discovery without requiring Bosch to incur the burden and risks attendant to producing its source code as would be required by the Carrum subpoenas:

5) The Carrum subpoenas should be quashed and modified to compel compliance with the alternatives set forth in paragraph 4, above.

6) Carrum's motion to compel should be denied without prejudice. If, after good faith cooperation by both parties, Carrum is still not able to obtain the information it believes is necessary to prove or dispel its claims, the Court will be able to revisit the issue.

III. BOSCH'S MOTION TO STRIKE DR. SHAVER'S DECLARATION IN SUPPORT OF PLAINTIFF'S MOTION TO COMPEL (ECF No. 11)

a. Background

As noted in Section II.g.2. above, Bosch alleges that Carrum has violated multiple provisions of the Protective Order by, among other things, providing Bosch's protected materials to Dr. Shaver without Bosch's approval and before disclosing him as an expert in Carrum v. FCA, thus barring Bosch's ability to timely object to such disclosure. See also ECF No. 11, PageID.402-05. On December 21, 2021, Dr. Shaver signed a declaration in support of Carrum's motion to compel which was based in part on his consideration of documents designated by Bosch as highly confidential, including Bosch's highly confidential source code materials, pursuant to the Protective Order. ECF No. 5-16, PageID.303-311, ¶¶ 1, 23 and 24. On December 28, 2021, Carrum notified Bosch that Carrum revealed Bosch's Protected Materials to Dr. Shaver before granting Bosch the opportunity to object to this disclosure as required by the Protective Order. See ECF 11-3, PageID.455-57. On December 29, 2021, Carrum filed its motion to compel (ECF No. 5), including Dr. Shaver's declaration as an exhibit.

b. Analysis

Bosch subsequently filed its motion to strike, asking the Court to strike Dr. Shaver's Declaration filed in Support of Carrum's Motion to Compel. ECF No. 11, PageID.410. Bosch contends that “Carrum's untimely disclosure of Dr. Shaver has prejudiced Bosch because Bosch was unable to make its objection before Dr. Shaver signed and filed his Declaration in Support of Carrum's Motion to Compel.” ECF No. 11, PageID.406.

In its response, Carrum first claims that there is no basis for Bosch's objection to Dr. Shaver because, according to Carrum, he is not a competitor of Bosch. ECF No. 21, PageID.1318-20. Even if Dr. Shaver were not an actual or potential competitor, however, that would not establish that Carrum did not violate the Protective Order by allowing Dr. Shaver to review Bosch's Protected Materials before providing the required advance notice to Bosch.

Carrum also claims that its untimely disclosure was at most an inadvertent oversight, because Bosch's counsel was aware of Dr. Shaver's role in the Delaware litigation. ECF No. 21, PageID.1320. But Carrum's untimely disclosure, even if inadvertent, was still a violation of the procedure required by the Protective Order, which was designed to allow a producing party (or nonparty) such as Bosch an opportunity to object and be heard before its confidential information is disclosed to a receiving party's expert.

I find that Carrum violated the terms of the Protective Order by failing to make the disclosures required under Section 3.1(c) of the Protective Order at least ten business days before providing Bosch's designated Protected Material to Dr. Shaver.

c. Remedy

*9 Bosch contends that Dr. Shaver's premature review of its confidential documents taints his entire declaration, so the entire declaration should be stricken. ECF No. 11, PageID.408 and ECF No. 31, PageID.1541. Alternatively, Bosch contends that even if the Court declines to strike the declaration in its entirety, at least paragraphs 22 and 23 should be stricken because those are the paragraphs that rely on Dr. Shaver's improper and premature review of Bosch designated confidential documents. ECF No. 11, PageID.410.

Carrum contends that, at most, only paragraphs 22 and 23 should be stricken, because the remaining paragraphs draw on Dr. Shaver's background and expertise rather than any information learned from Bosch. On this point, I agree with Carrum.

The Shaver declaration was submitted for the purpose of supporting Carrum's motion to compel, and Bosch's motion seeks to strike the declaration as submitted in support of that motion. In that context, Bosch could only be prejudiced by the Court's consideration of paragraphs 23 and 24 to support its motion to compel. Dr. Shaver's Declaration is improper to the extent it relies on Dr. Shaver's premature review of Bosch's Protected Materials. I find that the most appropriate remedy for Carrum's failure to make the disclosures required under Section 3.1(c) of the Protective Order at least ten business days before providing Bosch's designated Protected Material to Dr. Shaver is for the Court to strike paragraphs 23 and 24 of Dr. Shaver's declaration.

d. Recommendation on Bosch's Motion to Strike Shaver Declaration (ECF No. 11)

I recommend that the Court enter an order striking paragraphs 23 and 24 of ECF No. 5-16, Dr. Shaver's declaration in support of Carrum's motion to compel.

IV. BOSCH'S MOTION FOR PROTECTIVE ORDER PROHIBITING CARRUM FROM DISCLOSING BOSCH'S PROTECTED MATERIALS TO DR. SHAVER (ECF No. 15)

a. Background

Bosch has moved for a protective order under Fed. R. Civ. P. 26(c) prohibiting disclosure of Bosch's Protected Materials to Dr. Shaver. ECF No. 15, PageID.1083. Carrum first argues that Bosch's motion should be transferred to the District of Delaware under Fed. R. Civ. P. 45(f) for a decision by Judge Andrews. ECF No. 24, PageID.1411. Alternatively, on the merits, Carrum argues that the motion should be denied because Dr. Shaver is not a “competitor” of Bosch or “expected to become a competitor” of Bosch. ECF No. 24, PageID.1408 and 1411.

b. Legal Standard for Rule 45(f)

While the Federal Rules of Civil Procedure require parties to file subpoena-related motions in the district where compliance with the subpoena is required (Fed. R. Civ. P. 45(c), (d)(2)(B)(i), and (d)(3)(A)), Rule 45(f) permits the court to transfer such motions to the issuing court for adjudication where “the person subject to the subpoena consents or if the court finds exceptional circumstances.” Fed. R. Civ. P. 45(f). See Hoog v. PetroQuest, LLC, 338 F.R.D. 515, 517–19 (S.D. Fla. 2021), citing Subaru of America, Inc., No. 1:15-cv-21106, 2015 WL 9583278, at *3 (S.D. Fla. Dec. 31, 2015).

The Advisory Committee Notes to the 2013 amendments of Rule 45 provide two examples of situations in which transfer due to exceptional circumstances is appropriate: (1) when the issuing court has already ruled on issues presented by the motion, and (2) when the same discovery issues are likely to arise in many districts. The Advisory Committee Notes also state that “it should not be assumed that the issuing court is in a superior position to resolve subpoena-related motions.” Id.

c. Analysis of Carrum's request for transfer under Rule 45(f)

*10 Carrum argues that by invoking the protections of the Delaware Protective Order, Bosch consented to resolving disputes like this in the Delaware court. ECF No. 24, PageID.1412. Invoking the protections of a protective order issued by another court, however, is not the same as consenting to transfer a subpoena-related motion. Indeed, as noted above, Rule 45 parties to file subpoena-related motions in the district where compliance with the subpoena is required. I find no basis to conclude that Bosch has consented to a transfer of this motion.

Carrum also argues that exceptional circumstances exist warranting a discretionary transfer of this motion under Rule 45(f), citing Hoog v. PetroQuest. ECF No. 24, PageID1414. In Hoog v. PetroQuest, the court considered the Advisory Committee examples of situations in which transfer due to exceptional circumstances is appropriate: (1) when the issuing court has already ruled on issues presented by the motion, and (2) when the same discovery issues are likely to arise in many districts, along with cases considering other relevant factors (including, for example, “the duration and complex history of the underlying civil case, the risk that the same issues raised in the subpoena at issue were likely to arise in several districts, the risk of inconsistent discovery rulings, and judicial economy and efficiency”). 338 F.R.D. at 517–19. The court found exceptional circumstances existed because the underlying case had a long and complex history, the same issues raised in the motion before it had been raised in a similar motion to compel currently pending before the court. Id. “The dispute regarding Mr. Wall's deposition involves the same “Apex Doctrine” issue as involved in Mr. Palumbo's motion, and also involves the same attorneys that are litigating the dispute in this case.” Id. Consequently, the Hoog court found that there is no burden or prejudice to the moving party, since the lawyers were the same, and “transfer of the case will avoid any possibility of inconsistent rulings on the key “Apex Doctrine” issue as well as relevancy and proportionality.

Carrum argues that the motion should be transferred “to avoid “disrupting the issuing court's management of the underlying litigation” (ECF No. 24, PageID.1414), but offers no suggestion as to how this Court's resolution of this motion would be disruptive. While disruption of the underlying litigation may occur where (1) the issuing court has already ruled on issues presented by the present motion, or (2) that the same discovery issues are likely to arise in many districts (see examples of exceptional circumstances identified in the Advisory Committee Notes), Carrum does not suggest that either of these risks exist here. In fact, Carrum argues the opposite, that no other discovery target has raised any similar issue, which weighs against transfer. ECF No. 24, PageID.1419–20.

Moreover, Carrum does not explain how transfer of this motion would avoid any possibility of inconsistent rulings, the risk presented by the concurrent motions presented in Hoog v. PetroQuest. To the contrary, this case presents three interrelated motions involving many of the same underlying facts and issues. Here, the risk of inconsistent rulings would be heightened, not diminished, if different courts were to rule on different motions.

In sum, I find that exceptional circumstances do not presently exist sufficient to justify an exercise of this Court's discretion to transfer this motion under Rule 45(f).

d. Analysis of Bosch's Motion to Compel

*11 In Section II above, this Report and Recommendation addressed the reasons why granting Carrum's motion to compel Bosch to produce its source code for review by Dr. Shaver or any actual or potential competitor of Bosch in the autonomous vehicle industry would constitute a burden on Bosch that outweighs the need for production requested by Carrum and would therefore impose an undue burden on Bosch. For the reasons as outlined above, I find that Bosch's motion for a protective order should be granted to the extent that it seeks to prohibit disclosure of Bosch's Discovery Materials that have been designated as “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS ONLY-SOURCE CODE” to Dr. Shaver should be granted.

However, Bosch's motion for a protective order goes beyond Bosch's source code – it broadly seeks to prohibit disclosure of “Bosch's Protected Materials” to Dr. Shaver. ECF No. 15, PageID.1083. Bosch's arguments were primarily, if not exclusively, directed to the risks and burden to Bosch of permitting Dr. Shaver access to its source code. The Protective Order, however, describes three distinct kinds of Protected Material. ECF No. 15-2. It defines “Protected Material” as “any Discovery Material that is designated “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES ONLY,” OR “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES ONLY-SOURCE CODE as well as any information copied, extracted, summarized, or compiled from Discovery Material that is [so] designated.” ECF No. 15-2, § 1.13.

Neither Bosch nor Carrum provided any breakdown or other details concerning the nature and extent of the different categories of “Protected Information” produced by Bosch. And neither Bosch nor Carrum offered any analysis concerning the actual or potential burden or risks that may be attendant to allowing Dr. Shaver access to non-source code materials (i.e., Protected Materials designated as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES ONLY”). Consequently, I find that it would be premature to rule on either the merits or the proper court for adjudication of Bosch's motion to the extent that it may seek to prohibit disclosure of Protected Materials other than Bosch's source code materials to Dr. Shaver.

e. Recommendation on Bosch's Motion for Protective Order Prohibiting Carrum From Disclosing Bosch's Protected Materials to Dr. Shaver (ECF No. 15)

I recommend that the Court enter an order granting in part and denying in part Bosch's motion for a protective order prohibiting Carrum from disclosing Bosch's Protected Materials to Dr. Shaver. Specifically,

1. Bosch's motion for a protective order prohibiting disclosure of Bosch's Protected Materials to Dr. Shaver should be granted as to materials that have been designated as “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS ONLY-SOURCE CODE.”

2. To the extent that Bosch's motion seeks to prohibit disclosure of Bosch's Protected Materials designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL-OUTSIDE ATTORNEYS' EYES ONLY,” the motion should be denied without prejudice.

V. DEADLINE FOR OBJECTIONS

Under Fed. R. Civ. P. 53(f)(2), parties may file objections to a special master's report no later than twenty-one days after a copy of the report is served, unless the court sets a different time.

Respectfully submitted,

Dennis M. Barnes (P39401)

DENNIS M. BARNES, PLLC

8540 Canton Center Road

Canton, Michigan 48187

(248) 736-4828

Dennis@BarnesADR.com