*1 Now before the Court is Plaintiff Deere & Company's Motion for Relief Under Rule 37 Due to XAPT Defendants' Failure to Identify Their Trade Secrets in Defiance of Multiple Court Orders (Doc. 334)[1] and the XAPT Defendants' Motion to Compel Deere & Company to Respond to XAPT Common RFP No. 15 (Doc. 335). The Motions are fully briefed, and for the reasons stated herein, the Court: 1) recommends the Plaintiff's Motion for Relief Under Rule 37 Due to XAPT Defendants' Failure to Identify Their Trade Secrets in Defiance of Multiple Court Orders (Doc. 334) be granted in part and denied in part; and 2) denies the XAPT Defendants' Motion to Compel Deere & Company to Respond to XAPT Common RFP No. 15 (Doc. 335).

Plaintiff Deere & Company (Deere) filed this lawsuit on October 18, 2019 and asserts claims for, among other things, breach of contract, fraudulent inducement, reformation, conversion, and replevin. See Second Am. Compl. (Doc. 60). Deere alleges that it entered into a contract with Defendant XAPT Corporation (XAPT) for the latter to develop a state of the art global, integrated software system, a Dealer Business System (DBS), that Deere's dealers worldwide could use to manage all aspects of their businesses. Id. at pgs. 3, 5. Per Deere, despite XAPT's representations that it is an expert and global leader in software solutions, XAPT continually failed to deliver as required by the contract, the current code contains exceptionally high numbers of defects, and XAPT's poor performance has caused the project to take years longer and millions of dollars more than Deere had committed. Id. at pg. 3. Thus, Deere terminated its contracts with XAPT following XAPT's “mounting breaches.” Id.

In January 2022, Defendant XAPT counterclaimed for, among other things, breach and repudiation of contract, violation of the Defend Trade Secrets Act, misappropriation of trade secrets in violation of the Delaware Uniform Trade Secrets Act, and violation of the Illinois Trade Secrets Act. See XAPT Countercl. (Doc. 193 at pgs. 7-39). As Defendant XAPT put it, it brings its Counterclaim “to hold Deere accountable for its multiple breaches of contract and repudiation of the parties' agreements and seeks injunctive relief to prevent irreparable harm from Deere's illegal possession and misuse of XAPT's unique software, ‘NAXT’ or ‘NAXT Core.’ ” Id. at pg. 7. XAPT alleges:

*2 Id. at pg. 31.

Defendant XAPT KFT (KFT), named in Deere's Second Amended Complaint and alleged to share a unity of interest and/or control with XAPT, filed its own Counterclaims against Deere in June 2022. KFT Countercls. (Doc. 231). KFT alleges that it is the owner and developer of NAXT 365 which is “an enterprise business management software for heavy equipment dealers,” and KFT has “spent years, millions of dollars, and countless manhours developing and customizing NAXT.” Id. at pg. 2. KFT says NAXT is an “add on” software for Microsoft Dynamics 365. Id. KFT, which has three copyright registrations for NAXT, claims Deere infringed those copyrights.[2] Id. at pgs. 8, 10.

A discovery plan was entered in this case on March 4, 2020, and on October 3, 2023, Plaintiff Deere filed its Motion for Relief Under Rule 37 Due to XAPT Defendants' Failure to Identify Their Trade Secrets in Defiance of Multiple Court Orders (Doc. 334) while the XAPT Defendants filed their Motion to Compel Deere & Company to Respond to XAPT Common RFP No. 15 (Doc. 335).

In its Motion for Relief Under Rule 37 Due to XAPT Defendants' Failure to Identify Their Trade Secrets in Defiance of Multiple Court Orders (Doc. 334) (Motion for Rule 37 Relief), Plaintiff Deere argues Defendant XAPT alone holds all the factual information necessary to identify its trade secrets with specificity. Deere asserts rather than comply with the Court's orders, XAPT has for more than a year flouted the Court's orders, repeatedly raised the same arguments, forced the Court to rule on the same issues more than once, and continuously moved the goalposts of what it says it needs to identify its own intellectual property. Deere argues that as a result of such conduct, XAPT must now be held accountable under Rule 37 for its discovery abuses.

In its Motion for Rule 37 Relief, Deere reiterates that its longstanding Interrogatories 1, 2, and 11 remain at issue after all this time and details those three Interrogatories as follows. Deere's Trade Secret Interrogatory 1 asks for XAPT to identify its code-based trade secrets: “Separately for each code or portion of code referenced in the Listing of Code [the PDF and Excel listing of code prepared by Defendants and produced to Deere on the hard drive in April 2022], identify each portion of code that constitutes a trade secret of XAPT and/or of any of its co-Defendants.” Pl. Mot. (Doc. 334 at pg. 10). Deere's Trade Secret Interrogatory 2 asks XAPT to identify its non-code-based trade secrets – the alleged design elements and architecture, and the “trade secrets” the two NAXT Core and Supplier Modification code allegedly contain: “Separately for each trade secret being asserted in this case that is not within the Listing of Code, identify the trade secret with specificity.” Id. Deere's Interrogatory 11 asks XAPT to “Identify the specific intellectual property right owned by XAPT and the specific file in Deere's possession (with enough specificity so that they can be located by Deere), You contend constitutes or contains Your intellectual property.” Id. at pg. 9.

*3 At the April 21, 2022 hearing, Plaintiff Deere sought to quash a subpoena Defendant XAPT sent to Microsoft as the subpoena was “not tethered to the narrow, specific trade secrets at issue in this case, which have yet to be identified[.]” 4/21/2022 Hr'g Tr. 10:1-3 (Doc. 212 at pgs. 9-10). Deere's efforts to get Defendant XAPT to identify its trade secrets was brought to the Court's attention in earnest on June 22, 2022, via Deere's Motion for Hearing Concerning Discovery Dispute (Doc. 228) in which it indicated the dispute pertained to a “threshold issue” with Defendant XAPT. At the June 28, 2022 hearing on Deere's Motion, it explained Deere had served interrogatories asking for identification of the intellectual property rights XAPT was asserting in this case. 6/28/2022 Hr'g Tr. 5:2-4 (Doc. 235 at pg. 5). Deere underscored, “The caselaw says that they can't point to a pile of documents and say that's our trade secrets. And they can't just point to a pile of code and not identify which portions of those codes are code related and owned by it.” 6/28/2022 Hr'g Tr. 5:4-9 (Doc. 235 at pg. 5). Thereafter, the parties continually filed various requests and documents directed at the trade secrets discovery dispute. The Court held hearings as to that dispute on March 6, 2023, March 28, 2023, May 12, 2023, June 27, 2023, July 28, 2023, August 11, 2023, August 25, 2023, September 12, 2023, October 20, 2023, and, most recently, November 20, 2023.

At the March 28, 2023 hearing, Deere argued XAPT persisted in failing to identify what in the source code were XAPT's trade secrets. 3/28/2023 Hr'g Tr. 54:25-55:6 (Doc. 278 at pgs. 54-55). XAPT, in response, repeated its position (originally raised in September 2022) that a code review would enable it to identify its trade secrets in a time-and work-saving manner. 3/28/2023 Hr'g Tr. 74:14-75:14 (Doc. 278 at pgs. 74-75). The Court ultimately directed the parties at that hearing to submit proposed plans for code review. The next day, the Court entered Plaintiff Deere's proposed Protective Order (Doc. 277). Deere, given entry of its Protective Order, produced its Finance & Operations (F&O) based code “in an effort to break the impasse” as to XAPT's identification of its intellectual property. Pl. Proposal (Doc. 284 at pg. 2).

At the May 12, 2023 hearing, the Court noted that XAPT first said it needed screenshots in order to respond to Deere's Trade Secret Interrogatories and those screenshots were provided, but then XAPT contended those were not enough and that it needed a code review. 5/12/2023 Hr'g Tr. 25:7-26:4 (Doc. 297 at pgs. 25-26). The Court observed, “Deere has been saying all along [XAPT] should know what their intellectual property is. They shouldn't have to do a code review, but [XAPT] said no, we have to do a code review, so [Deere has] given you the code, and their [code review] proposal is all that you're entitled to at this point. Id. at 26:24-27:3. It should be more than sufficient for you to identify your code.” Id. at 27:3-4. The Court adopted Deere's code review proposal and set a revised discovery schedule.

At the July 28, 2023, hearing, the Court addressed XAPT's most recent contention (as of that date) that the code Deere produced appeared to be incomplete, that it did “not appear to be all of the protocol we need[.]” 7/28/2023 Hr'g Tr. 4:13-15 (Doc. 314 at pg. 4). XAPT requested the Court compel Deere to produce all of the accused Deere DBS code and related ESI. Deere confirmed to the Court that it produced all of the F&O code it had and did not omit any part of it. Id. at 6:7-13. The Court again mentioned that XAPT received what it requested – the source code – yet continued to say what it received was not enough and it needed more. The Court stated, “You've gotten what you're entitled to. That's what you're gonna get, period, so you need to take that and you need to do whatever you need to do with it to identify and answer the outstanding discovery requests related to more specifically identifying precisely what you're claiming has been misappropriated, so I'm denying XAPT's request.” Id. at 69:3-9. At the September 12, 2023 hearing, the Court underscored that XAPT got what it requested though its response continued to be that it needed more time and more information. 9/12/2023 Hr'g Tr. 9:14-24 (Doc. 332 at pg. 9).

Deere provided the Court with XAPT's August 25, 2023 Amended Answers to the former's Trade Secret Interrogatories 1 and 2 and Interrogatory 11. XAPT's answers provide:

The Amended Answers do not, however, actually identify the trade secrets themselves. Trade Secret Interrogatory 1's Amended Answer list sets of ZIP files, file or folder names containing the terms “NAXT” or “XAP,” and exemplar NAXT Release Notes wherein “[t]housands of additional specific NAXT source code files containing XAPT's trade secrets are listed.” (Doc. 333-1 at pg. 136). Trade Secret Interrogatory 2's Amended Answer includes bullet point lists of “specific examples” of things that “contain or reflect XAPT's trade secrets.” Id. at pg. 137. Interrogatory 11's Amended Answer includes several lists spanning 46 pages indicating where, per XAPT, its trade secrets are “contain[ed].” Id. at pgs. 19-65.

“There is ... a specificity requirement inherent in a claim for misappropriation of trade secrets; a plaintiff must show ‘concrete secrets’ rather than ‘broad areas of technology.’ ” REXA, Inc. v. Chester, 42 F.4th 652, 662 (7th Cir. 2022) (quoting Life Spine, Inc. v. Aegis Spine, Inc., 8 F.4th 531, 540 (7th Cir. 2021)). “[A] plaintiff cannot state a claim for trade secret protection simply by producing long lists of general areas of information which contain unidentified trade secrets.” Allstate Ins. Co. v. Ameriprise Fin. Servs., Inc., No. 17-cv-5826, 2023 WL 5334638, at *13 (N.D. Ill. Aug. 18, 2023).

At the March 28, 2023 hearing, the Court pointed out to Defendant XAPT that it was requested to identify its trade secrets “with specificity,” that it had to identify what its trade secret is, and that the Court could not figure out what XAPT's trade secret(s) is. 3/28/2023 Hr'g Tr. 62:3-13 (Doc. 278 at pg. 62). The Court further asked XAPT's counsel, “Are you telling me you don't know what your trade secret is?” Id. at 63:8-9. At hearings since that time, the Court continued to address the need for XAPT to precisely/with specificity identify its intellectual property. At the September 12, 2023 hearing, the Court stated, “I'm done with this issue. If by now I can't identify what his trade secrets are with specificity, time is up[.]” 9/12/2023 Hr'g Tr. 11:2-4 (Doc. 332 at pg. 11).

Defendant XAPT's Amended Answers to Trade Secret Interrogatories 1 and 2 and Interrogatory 11 simply do not identify any trade secrets. Instead, the Amended Answers just say where the trade secrets may be found or where they may be embodied. Those responses are no different than “see pile of documents” or “see pile of code” as Plaintiff Deere has been saying all along on this issue. Defendant XAPT's expert, Robert Zeidman, merely identified multiple instances of suspected copying between XAPT's and Deere's respective source code files; Neither Zeidman nor XAPT actually identifies any trade secrets. Zeidman Decl. (Doc. 342-1 at pg. 26). The Court pointedly asked XAPT at the November 20, 2023 hearing how many trade secrets it was claiming, “the number,” and XAPT's counsel responded, “I can't give you an exact number here today, but it's probably literally thousands.” 11/20/2023 Hr'g Tr. 21:25-22:3 (Doc. 347 at pgs. 22-23). Later, the Court pressed, “Well, I'm asking, in, like, reality. It's at least how many [trade secrets], do you think?” Id. at 41:24-25. XAPT's counsel similarly responded, “I don't think I can give you an accurate number, but tens of thousands is probably fair.” Id. at 42:1-2. There is no way to conduct discovery in a case involving tens of thousands of unidentified trade secrets, and XAPT's counsel acknowledged at the November 20th hearing that “there's no way [XAPT's counsel] are gonna go to trial on 10,000 things.” Id. at 42:20-21. Of note: XAPT's own expert, Zeidman, identified the steps to conduct a code review in the article What, Exactly, Is Software Trade Secret Theft? The first step, not the last, for determining source code trade secrets theft “requires the owner of the software to determine the intellectual property that comprises their trade secrets and then to point out those sections of code that implement them.” Bob Zeidman and Nikolaus Bear, INTELLECTUAL PROPERTY TODAY (Feb. 29, 2008) (Doc. 324-2 at pg. 2) (emphasis added). The bottom line is that the Court and Plaintiff Deere are no closer today than the two were at the beginning of the case of knowing what Defendant XAPT's trade secrets are.

*5 XAPT's failure to specifically identify its trade secrets after all this time is important for several reasons. First, XAPT's trade secrets must be known because those serve as a limiting principle for the scope of discovery. Counsel for both parties agreed at the March 28, 2023 hearing that identifying the trade secrets would, in turn, identify the scope of what is potentially relevant discovery. See, e.g., 3/28/2023 Hr'g Tr. 130:16-131:7 (Doc. 278 at pgs. 130-31); see also 5/12/2023 Hr'g Tr. 26:9-11 (Doc. 297 at pg. 26) (Court stating “Until we know exactly what the intellectual property is, there's no way to narrow the focus of all these other discovery requests”). Second, no one can determine what discovery is relevant to any claim or defense in this case per Federal Rule of Civil Procedure 26 without knowing what XAPT's trade secrets are. Finally, the Court simply cannot proceed to the merits on tens of thousands of unidentified trade secrets. Aside from the considerations of the just, speedy, and inexpensive determination of this action, significantly, there is no way to establish the elements of a trade secret that has not even been identified. See Life Spine, Inc., 8 F.4th at 540 (providing information is a trade secret if: 1) “the owner thereof has taken reasonable measures to keep such information secret” and 2) “the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information”) (quoting 18 U.S.C. § 1839(3)).

Plaintiff Deere seeks dismissal of Defendant XAPT's trade secret Counterclaims where XAPT has, more than a year after Deere moved to compel XAPT to specifically identify its trade secrets and the Court ordered XAPT to do so, flouted the Court's orders, repeatedly raised the same arguments, repeatedly forced the Court to rule on the same issues, and repeatedly moved the goalposts of what it says it needs to identify its own intellectual property. Federal Rule of Civil Procedure 37 provides a non-exhaustive list of sanctions a court may impose where a party does not obey a discovery order. FED. R. CIV. P. 37(b)(2)(A)(i)-(vii). The remedy of dismissal that Deere seeks is the harshest remedy available.

Less harsh remedies include staying further proceedings until the order is obeyed and requiring the disobedient party to pay reasonable expenses, including attorney's fees, caused by the failure. FED. R. CIV. P. 37(b)(2)(A)(iv) and 37(b)(2)(C). Another option is to foreclose any further discovery on the issue. See e360 Insight, Inc. v. Spamhaus Project, 658 F.3d 637, 642 (7th Cir. 2011) (recognizing that district courts have “wide latitude in fashioning appropriate sanctions”). The Court finds that to foreclose any further discovery on the issue is the appropriate remedy in this case given the length of time that has elapsed and the multiple opportunities XAPT has been given to identify its trade secrets.

Again, the dispute over XAPT's failure to identify, with specificity, its trade secrets began with Deere filing its Motion for Hearing Concerning Discovery Dispute (Doc. 228) in June 2022 – 19 months ago. XAPT's failure to identify its trade secrets halted considerable discovery. As early as the April 2022 hearing on Deere's motion to quash subpoena, the Court indicated the parties were to exchange information among themselves before third parties may become subjects of a subpoena. 4/21/2022 Hr'g Tr. 26:6-15 (Doc. 212 at pg. 26). At the July 28, 2023 hearing, the Court unequivocally ordered “no one can issue any discovery to anybody, party or non-party, “without my prior permission.” 7/28/2023 Hr'g Tr. 63:18-19 (Doc. 314 at pg. 63). The Court further clarified, “So the only discovery issues that are going to be at issue in this case are the ones that are already outstanding that we've been dealing with, and unless and until we get every single one of these issues resolved once and for all, the productions are complete, everything is resolved as to that, there's not gonna be any more written discovery in this case, okay?” Id. at 63:20-64:1. There is just no way for the Court to regulate discovery in this case without the identification of Defendant XAPT's trade secrets, and thus there is no way for the parties to conduct additional discovery on XAPT's trade secret claims.

The Court previously warned, at the September 12, 2023 hearing, that it would prohibit any further discovery on the trade secrets claims if it found XAPT's answers to Deere's trade secrets interrogatories insufficient. See 9/12/2023 Hr'g Tr. 10:21-23 (Doc. 332 at pg. 10) (“If I find that they're not sufficient, you're done. That's your last chance, okay? That's the end of discovery on the trade secrets because we've had plenty of time”). Because the Court now finds that no further discovery on Defendant XAPT's trade secrets claims may occur, and because its finding will likely result in XAPT's inability to survive a dispositive motion, the Court construes this remedy as having dispositive effects. Consequently, the Court reaches its conclusion in the form of a Report & Recommendation. See FED. R. CIV. P. 72(b)(1) (providing a magistrate judge must enter a recommended disposition on a pretrial matter dispositive of a claim or defense).

*6 Plaintiff Deere also argues that Defendant KFT's answers to Interrogatories 16, 17, 18, and 20 improperly invoke Federal Rule of Civil Procedure 33(d) in derogation of the Court's orders. Those Interrogatories asked as follows:

(Doc. 334 at pgs. 10-11). Among other things, KFT, supplementing its earlier answers, answered each by stating, “Because the burden of examining and comparing the code is substantially the same for either party, as permitted by Fed. R. Civ. P. 33(d) XAPT KFT identifies the following documents and things from which the information requested may be obtained ....” (Doc. 333-1 at pgs. 142-44). Whereas Deere argues those four Interrogatories relate to the identification of trade secrets, XAPT disagrees, arguing the Supplemental Interrogatories very plainly asked only about copyright issues and were directed to Defendant KFT, a party with no trade secret claims in the case. In light of the December 14, 2023 denial of Deere's motion to dismiss Defendant KFT's copyright Counterclaims, the Court rules as follows with regard to Interrogatories 16-18 and 20.

As an initial matter, the Court does not accept that because XAPT has failed to specifically identify its trade secrets, Defendant KFT's Supplemental Answers to Interrogatories 16-18 and 20 necessarily fall short. Trade secrets misappropriation claims and copyright infringement claims are distinct from one another: “A claim of trade secret misappropriation ... requires that the information have a status of secrecy and that a confidential relationship be breached. Both of these elements go beyond the rights regulated under the Copyright Act.” Seng-Tiong Ho v. Taflove, 648 F.3d 489, 503 (7th Cir. 2011). Thus, there is a difference between asking an opposing party to identify portions of code that constitute its trade secrets and asking an opposing party to identify what portions of copyrighted code appearing in a Copyright registration are the code of a third party or a derivative of code of a third party, are not original to the author, or are expressions in the public domain. Third party code is presumably just as available to one party as it is to another, and that is certainly true insofar as expressions in the public domain are concerned.

*7 Here, the XAPT Defendants point out that XAPT properly identified XAPT's and Microsoft's relevant source code known as of the date of the interrogatory responses. XAPT points out it also explained how to examine the documents for the information sought in each request. It answered third-party code and derivatives thereof in the NAXT 365 code (No. 16) can be identified by examining the NAXT 365 code to locate third-party copyright notices and by comparing the NAXT 365 code to third-party base code. It similarly answered as to any unmodified third-party code not original to XAPT (No. 17). It answered that any portion of the NAXT 365 code that may be in the public domain (No. 18) may be identified by examining the NAXT 365 code and comparing it to code in the public domain. For each of those three supplemental interrogatory answers, KFT identified, in list form, documents and “things from which the information requested may be obtained.”

Rule 33(d) provides:

The Court does not find that KFT improperly invoked Rule 33(d) in the context of KFT's copyright Counterclaims.

Deere's Interrogatory 20 asked for identification of “expressions dictated by external factors such as compatibility with other programs” and KFT's Supplemental Answer states, “Without waiving its previously asserted objections, including the fact that, as worded, the question does not seek information relevant to any claim or defense and is not proportional to the needs of the case, XAPT KFT responds that XAPT KFT cannot answer this interrogatory as worded.” (Doc. 342 at pg. 55). In its original Answer to No. 20, KFT stated in part, “It is not necessary to do this analysis [to specifically identify all unclaimed code associated with the copyright registrations] in the abstract and before the Deere code accused of infringement is identified.” (Doc. 333-1 at pg. 98).

“[E]xternal factors such as compatibility with other programs” – or, per XAPT, the “unprotectable” elements of KFT's copyrights – once again alludes to information available to both parties in the public domain. KFT's Supplemental Answer to No. 20 is therefore sufficient for the same reason its Supplemental Answers to Nos. 16-18 are.

On December 14, 2023, the XAPT Counterclaimants filed a Supplement to Counterclaimants' Response (Dkt. 342) to Plaintiff Deere's Rule 37 Motion (Dkt. 334) (Doc. 350). Their Supplement addresses the Court's several questions asked at the November 20, 2023 hearing about whether XAPT could provide a count of the number of trade secrets XAPT owns in the NAXT 365 software and source code. XAPT argues it would require thousands of man-hours costing millions of dollars to analyze all of the NAXT 365 software and source code to attempt to parse out and count each and every individual trade secret. It states further, “A full code analysis, which Counterclaimant XAPT has repeatedly requested, would, by use of computing power as opposed to humans counting of over 5.6 million lines of code, parse substantially similar or identical code from all of the source code for Deere's Accused DBS and identify overlapping, and thus accused, code.” (Doc. 350 at pg. 3). Deere filed its Response (Doc. 354) to XAPT's Supplement on January 15, 2024.

Inescapably, XAPT's supplemental argument is just the latest example of how it has persisted in attempting to move the goalposts (in Deere's words) rather than do what has been required of it for more than a year: identify its trade secrets with specificity. Again, the Court gave XAPT what is asked for earlier in the trade secrets discovery dispute. The Court is unmoved by the supplemental argument, and Deere's Response echoes much of the Court's reasoning above as to XAPT's inability after all this time to identify its trade secrets with specificity. However, the Court is also unmoved by Deere's reiteration that its Interrogatories 16-18 and 20 are not limited to copyright issues because “they seek factual information key to identifying XAPT's trade secrets because, as XAPT admits in its initial interrogatory answers, these categories of code are ‘unclaimed code.’ ” (Doc. 354 at pg. 12).

*8 Finally, in their Motion to Compel Deere & Company to Respond to XAPT Common RFP No. 15 (Doc. 335), the XAPT Defendants seek disclosure of the KPMG report. (Doc. 335-1 at pg. 49). At the September 12, 2023 hearing, Deere's counsel explained the KPMG report is a third-party consulting expert report. 9/12/2023 Hr'g Tr. 25:20 (Doc. 332 at pg. 25). The XAPT Defendants learned of that report during the settlement conference in this case. Id. at 25:24-26:4; see also XAPT Common RFP No. 15 (Doc. 335-1 at pg. 49) (“Provide documents and communications ... including the KPMG report Deere referenced during the parties' settlement conference ....”). In its Response to No. 15, Deere made several objections including that it violated the Court's rules governing the confidentiality and express assurances given by the Magistrate Judge that the information disclosed at the settlement conference would be used for no purpose other than the settlement conference, that it sought expert disclosures before the date for expert disclosures, and that it improperly invaded the attorney-client and work-product privileges. (Doc. 335-1 at pgs. 49-50). In their Motion to Compel, the XAPT Defendants argue the KPMG report is presumptively discoverable under Federal Rule of Civil Procedure 26(b)(1), the report, as a third-party report, is not protected by attorney-client privilege, the report is not protected by the work-product privilege, and the mediation privilege does not apply to a third-party document disclosed during mediation. They also argue Deere's response includes nothing but boilerplate objections.

The Court agrees with each of Plaintiff Deere's arguments in opposition. See Pl. Deere Resp. (Doc. 338). First, Rule 26(b)(1) does not allow for presumptive discovery of privileged information. See FED. R. CIV. P. 26(b)(1) (providing for discovery of any non-privileged matter that is relevant to a party's claim or defense). Second, the KPMG report is protected under the attorney-client and work-product privileges. As Deere states, its communications with KPMG, including the KPMG report, are protected under the work-product privilege (Rule 26(b)(3)) and Rule 26(b)(4)(D) at this time because they were made in anticipation of litigation and are the work product of a non-testifying consulting expert. See FED. R. CIV. P. 26(b)(4)(D) (“Ordinarily, a party may not, by interrogatories or deposition, discover facts known or opinions held by an expert who has been retained or specially employed by another party in anticipation of litigation or to prepare for trial and who is not expected to be called as a witness at trial”). The attorney-client privilege covers third parties who are agents of either the lawyer or the client. Heriot v. Byrne, 257 F.R.D. 645, 665 (N.D. Ill. 2009). Indeed, the XAPT Defendants do not explain how Deere's privilege objection is “boilerplate.”

Third, XAPT has not demonstrated a “substantial need” to obtain the KPMG report merely because Deere “appears to rely upon” it to support its case. See FED. R. CIV. P. 26(b)(3)(A)(ii) (providing work product may be discoverable if “the party shows that it has substantial need for the materials to prepare its case and cannot, without undue hardship, obtain their substantial equivalent by other means”). Deere concedes that if it does in fact intend to rely on KPMG and its report, Deere will disclose them under the Rules of Civil Procedure, and if it does not disclose the report, then Deere will not rely on it to support its case. Fourth, even if KPMG becomes a testifying expert, XAPT's request is premature because Deere's expert disclosures are not due yet.[3] Fifth, the Court previously confirmed that information during the settlement conference would remain confidential under Federal Rule of Evidence 408, and Illinois and Delaware law provide for the protection of information exchanged during a settlement conference. See Royce v. Needle, No. 15 C 259, 2015 WL 5095721, at *7 (N.D. Ill. Aug. 20, 2015) (explaining, under the Illinois Mediation Act, communications that occur “during mediation” or are “made for purposes of considering, conducting, participating in, initiating, continuing, or reconvening a mediation or retaining a mediator” are “not subject to discovery or admissible in evidence in a proceeding” subject to limited exceptions) (citing 710 ILCS 35/2(2) and 35/4(a), 35/5, 35/6)); see also In re Oracle Corp. Derivative Litig., No. 2017-0337-SG, 2020 WL 3867407, at *10 (Del. Ch. July 9, 2020) (“Delaware has a strong public policy favoring confidentiality in all mediation proceedings”). The KPMG report was discussed, but not disclosed to the XAPT Defendants (nor even to the Court). The Court agrees with Deere that to allow XAPT to discover the KPMG report at this time would have a chilling effect on future settlement conferences.

*9 Simply put, disclosure of the KPMG report to the XAPT Defendants at this time would be premature. The Motion (Doc. 335) is denied.

The Court recommends that Plaintiff Deere & Company's Motion for Relief Under Rule 37 Due to XAPT Defendants' Failure to Identify Their Trade Secrets in Defiance of Multiple Court Orders (Doc. 334) be: 1) GRANTED as to Trade Secrets Interrogatories 1, 2, and 11 for the reasons set forth in Section II above; and 2) DENIED as to Interrogatories 16-18 and 20 for the reasons set forth in Section III above. The XAPT Defendants' Motion to Compel Deere & Company to Respond to XAPT Common RFP No. 15 (Doc. 335) is DENIED for the reasons set forth in Section V above.

The parties are advised that any objection to this Report and Recommendation must be filed in writing with the Clerk within fourteen (14) days after service of this Report and Recommendation. FED. R. CIV. P. 72(b)(2); 28 U.S.C. § 636(b)(1). Failure to object will constitute a waiver of objections on appeal. Johnson v. Zema Systems Corp., 170 F.3d 734, 739 (7th Cir. 1999); Lorentzen v. Anderson Pest Control, 64 F.3d 327, 330 (7th Cir. 1995).

Entered on January 19, 2024.