*1 Plaintiff Carrum Technologies moved, under seal, to compel compliance with a subpoena seeking documents and a source code related to components produced by Respondent Robert Bosch. ECF 5. Respondent moved for a protective order. ECF 15. For the reasons below, the Court will grant the motion for a protective order.

Plaintiff sued Defendant FCA, a vehicle manufacturer, in the District of Delaware and alleged that FCA infringed two of Plaintiff's adaptive cruise control technology patents. See Carrum Technologies, LLC v. FCA, C.A. No. 18-1646 (D. Del.). Respondent supplies components of adaptive cruise control (ACC) systems to Defendant FCA. ECF 5, PgID 126. Plaintiff requested technical information related to the ACC systems contained in vehicles sold by FCA. Id. Respondent is not a party to the Delaware litigation but was identified by FCA as the third party that has the requested information. Id. Plaintiff therefore sought third-party discovery from Respondent. Id. Respondent produced some of the requested information but “withheld the technical documents and source code” that Plaintiff allegedly needs to prove infringement. Id.

Plaintiff then subpoenaed Respondent here and sought documents containing a source code that “reveal[s] the technical operation of the ACC components at issue.” ECF 5, PgID 130–31. Respondent refused to provide the requested information but proposed alternatives, such as “highly confidential technical documents, a declaration attesting to the operation of its trade secret source code, and/or a deposition of one of its engineers.” ECF 15, PgID 1093. Id. Plaintiff then moved for leave to file a sealed motion to compel compliance with a subpoena. ECF 1; 5. And Respondent moved to strike the declaration of Plaintiff's expert Dr. Gregory Shaver, which was attached to the motion to compel compliance. ECF 11.[1]

I. Motion for a Protective Order

Respondent moved for a protective order to prohibit “disclosure of [Respondent's] Protected Materials to ... Dr. [ ] Shaver.” ECF 15, PgID 1093. Respondent argued that Dr. Shaver, “who works with competitors of [Respondent] ..., may inadvertently disclose [Respondent's] trade secrets.” Id. at 1094. Respondent also claimed that Dr. Shaver already reviewed some of Respondent's source code without Respondent's knowledge and in violation of a protective order already issued in the Delaware litigation. Id. at 1095–96. According to Respondent, “[m]aintaining secrecy of [Respondent's] source code and related technical materials is critical to [Respondent's] position in this highly competitive field.” Id. at 1095. And “compared to the direct threat to [Respondent's] trade secrets posed by allowing its direct competitor to review the foundations of its autonomous driving technology, [Plaintiff's] potential prejudice is negligible.” Id. at 1109. Respondent therefore requested a protective order.

*2 Plaintiff responded to the motion and argued that “if [Respondent] seeks to invoke the protections of a protective order issued in the District of Delaware ..., it must do so in the District of Delaware.” ECF 24, PgID 1408. Plaintiff further argued that the Delaware protective order “does not bar Dr. Shaver from reviewing [Respondent's] materials” because, contrary to Respondent's allegations, Dr. Shaver is not one of its competitors. Id. at 1408. And the only company Respondent identified that was a direct competitor of Respondent—Peloton Technology—is “no longer in business.” Id. at 1421.

Respondent replied and argued that “[t]he Delaware Protective Order cannot protect [Respondent] from inadvertent disclosures through Dr. Shaver's other consulting roles or [Plaintiff's] carelessness, and it must be modified.” ECF 33, PgID 1605. Respondent also reiterated that Dr. Shaver is a competitor because Dr. Shaver “performs autonomous driving research[ ] with both public and private entities, meaning that he is [Respondent's] rival and is endeavoring to do the same thing as [Respondent].” Id. at 1608 (citations omitted).

II. Report and Recommendation

The Court-appointed discovery master, Dennis Barnes, filed a report and recommendation (R&R) and recommended that the Court deny Plaintiff's motion to compel, grant in part Respondent's motion for a protective order, and grant in part Respondent's motion to strike Dr. Shaver's declaration. ECF 35. The parties stipulated to denying Plaintiff's motion to compel and granting in part Respondent's motion to strike Dr. Shaver's declaration. ECF 42. Thus, only the second recommendation—the recommendation to grant in part Respondent's motion for a protective order—remains.

As for Plaintiff's request to transfer the motion for a protective order to the Delaware court, Mr. Barnes explained that “[i]nvoking the protections of a protective order issued by another court ... is not the same as consenting to transfer a subpoena-related motion.” ECF 35, PgID 1665. And because there was “no basis to conclude that [Respondent] has consented to a transfer of this motion,” transfer is unwarranted. Id.

Further, Mr. Barnes concluded there were no exceptional circumstances that warranted transferring the motion to the Delaware court. Id. He noted that Plaintiff did not claim that the Delaware court already resolved the issues and that Plaintiff failed to “explain how transfer of the motion would avoid any possibility of inconsistent rulings.” Id. at 1667. And because the case “presents three interrelated motions involving many of the same underlying facts and issues,” the “risk of inconsistent rulings would be heightened, not diminished, if different courts were to rule on different motions.” Id. Thus, Mr. Barnes found that there were no exceptional circumstances to justify transfer.

Mr. Barnes then recommended that the motion for a protective order should be “granted to the extent that it seeks to prohibit disclosure [to Dr. Shaver] of [Respondent's] Discovery Materials that have been designated as ‘highly confidential-outside attorneys' eyes only-source code.’ ” Id. at 1668 (alterations omitted). He observed that the Delaware protective order described three categories of protected material: “confidential,” “highly confidential-outside attorneys' eyes only,” and “highly confidential-outside attorneys' eyes only-source code.” Id. (alterations omitted); see also ECF 15-2. And he noted that Respondent's motion for a protective order “broadly [sought] to prohibit disclosure” of all three kinds of protected material. ECF 35, PgID 1668. Because neither party “provided any breakdown ... concerning the nature and extent of the different categories” or “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’ or ‘highly confidential’),” Mr. Barnes recommended that the Court should grant the motion only as to the protected materials designated as “highly confidential-outside attorneys' eyes only-source code” and deny the motion without prejudice as to the other protected materials. Id. at 1668–69 (alterations omitted).

III. Objections and Subsequent Motions

*3 Plaintiff objected to the R&R. ECF 37. Plaintiff argued that the R&R would “cause [Plaintiff] substantial prejudice” because “[n]either Dr. Shaver, nor [his employer] Purdue University, nor any of the outside entities with whom Dr. Shaver has conducted research, compete with [Respondent].” Id. at 1679. And Respondent “has not identified any reason to believe that Dr. Shaver—a respected academic—would be incapable of abiding by the confidentiality provisions of the Delaware Protective Order in connection with the [ ] material he reviews for this litigation.” Id. Plaintiff therefore argued that the Court should allow Dr. Shaver to view Respondent's non-source code protected materials. Id. at 1680. Last, Plaintiff argued that “the Court should at a minimum deny [Respondent's] motion with prejudice as to non-source code material[ ] so that [Plaintiff] can finally proceed with its Delaware litigation against FCA.” Id. (emphasis in the original).

Respondent countered that Dr. Shaver competes directly with Respondent, especially given Respondent's recent discovery of Dr. Shaver's work in the farming equipment industry. ECF 43, PgID 1743. Respondent also noted that the Delaware protective order limits access to any category of protected materials to experts that are not (1) “present employed by the Parties hereto for purposes other than this Litigation,” (2) “a competitor of any Defendant,” or (3) “expected to become a competitor of any Defendant.” Id. at 1753 (quoting ECF 15-2, PgID 1124, 1127). Thus, argued Respondent, Dr. Shaver should not be allowed to see any of the three categories of protected material because Respondent “faces the same harm from Dr. Shaver's review of all of its Protected Materials, not just source code.” Id. at 1753.

After reiterating its claim that Dr. Shaver is not a competitor of Respondent, Plaintiff replied that Dr. Shaver should be allowed to review all three categories of protected material. ECF 45, PgID 1920. And Plaintiff maintained that, at a minimum, “the Court should at least permit Dr. Shaver to access non-source code material.” Id.

Respondent filed a surreply without leave. ECF 46. Respondent maintained that filing the surreply was proper because “all of the new arguments by [Plaintiff] on the farming [equipment] issue are raised for the first time in its Reply brief.” Id. at 1933. Respondent also argued that Dr. Shaver was a direct competitor with Respondent because he worked on substantially similar technologies in the farming equipment field. Id. at 1934–36.

Plaintiff moved to strike the surreply for three reasons. ECF 47. First, Plaintiff argued that Respondent failed to seek the Court's leave to file a surreply. Id. at 1978. Second, Respondent cannot demonstrate good cause for a surreply. Id. And third, Respondent's alleged new evidence does not support Respondent's claim that Dr. Shaver is a direct competitor. Id. Respondent opposed that motion. ECF 48.

While the Federal Rules of Civil Procedure require parties to file subpoena-related motions in the district where compliance with the subpoena is required, 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 [C]ourt 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) (citation omitted). 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 already ruled on issues presented by the motion, and (2) when the same discovery issues are likely to arise in many districts.

“A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending.” Fed. R. Civ. P. 26(c)(1). “[T]he party seeking a protective order has the burden to demonstrate good cause with specificity.” Auto. Techs. Int'l, Inc. v. Siemens VDO Auto. Corp., No. 06-15756, 2009 WL 388374, at *1 (E.D. Mich. Feb. 13, 2009) (citations omitted).

*4 The Court must review de novo the factual findings and legal conclusions of the R&R to which a specific objection has been made. Hochstein v. Microsoft Corp., 730 F. Supp. 2d 714, 717 (E.D. Mich. 2010) (citing Fed. R. Civ. P. 53(f)).

The Court will first explain its decision to grant the motion for a protective order. Then, the Court will address Plaintiff's objections to the R&R.

As a preliminary matter, however, the Court will grant Plaintiff's motion to strike Respondent's surreply, ECF 47, because Respondent failed to seek the Court's leave before filing the surreply. “Parties do not have a right to file a surreply brief under the federal procedural rules or the local rules.” Albino-Martinez v. Adducci, 454 F. Supp. 3d 642, 646–47 (E.D. Mich. 2020) (Murphy, J.) (quotation marks and quotation omitted). Thus, parties “must first seek leave to file a sur-reply.” Id. (quotation marks and quotation omitted). Yet Respondent failed to do so. The Court will therefore grant the motion to strike Respondent's surreply and will not consider it.

I. Motion for Protective Order

To begin, the Court agrees with Mr. Barnes that no reason exists to transfer the motion to the District of Delaware. No evidence suggests that Respondent consented to a transfer of the motion. ECF 35, PgID 1665. And there are no exceptional circumstances that might warrant transferring the motion to the District of Delaware because neither party explained how the Court's resolution of the motion would be disruptive, would result in inconsistent rulings, or would affect similar discovery issues in other districts. See id. at 1667. Transfer is unwarranted.

The Court finds that Respondent demonstrated good cause for a protective order. Auto. Techs., 2009 WL 388374, at *1. Thus, the Court will grant the motion for a protective order as to all three categories of protected materials for the following reasons.

The Delaware protective order lists three categories of protected materials: “confidential,” “highly confidential-outside attorneys' eyes only,” and “highly confidential-outside attorneys' eyes only-source code.” ECF 15-2, PgID 1115, 1117 (alterations omitted). As it pertains to outside experts, access to all three categories of protected material is limited to experts that are not (1) “presently employed by the Parties hereto for purposes other than this Litigation,” (2) “a competitor of any Defendant, and” (3) “as of the time of retention ... expected to become a competitor of any Defendant.” Id. at 1124. In its motion for a protective order, Respondent moved to prohibit Dr. Shaver from reviewing all three categories of protected material. ECF 15, PgID 1082. Plaintiff argued that the Court should allow Dr. Shaver to review all three categories of protected material. ECF 24, PgID 1408. And Mr. Barnes recommended that the Court grant the motion for a protective order as to only the third category of protected material (“highly confidential-outside attorneys' eyes only-source code”). ECF 35, PgID 1669.

Yet while Mr. Barnes relied on the Delaware protective order's delineation of the three categories of protected material in making his recommendation, he did not rely on them in making any legal determinations. He referenced the parties' lack of argument about the second and third categories simply to explain why his recommendation applied only to the “highly confidential-outside attorneys' eyes only-source code” category. ECF 35, PgID 1669. If adopted in its entirety, the R&R would not preclude Dr. Shaver from reviewing all three categories of protected material.

*5 The Court finds that Respondent demonstrated that allowing Dr. Shaver to review the protected material would prejudice Respondent. Specifically, allowing Dr. Shaver to review the protected material would increase the likelihood that Dr. Shaver could inadvertently disclose Respondent's trade secrets to Respondent's competitors. That disclosure could prejudice Respondent because trade secrets, like the source code at issue, are “often a company's most sensitive and [ ] valuable property.” Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1300 n.13 (Fed. Cir. 2016).[2] Thus, because allowing Dr. Shaver to review the protected materials would prejudice Respondent by “mak[ing] its exploitation a possibility,” Mahavisno v. Compendia Bioscience, Inc., No. 13-12207, 2015 WL 248798, at *14 (E.D. Mich. Jan. 20, 2015), the Court will grant the motion for a protective order.

Plaintiff objected that Dr. Shaver was not a competitor—and was therefore allowed to view the protected materials—because “[n]either Dr. Shaver, nor [his employer] Purdue University, nor any of the outside entities with whom Dr. Shaver has conducted research, compete with [Respondent].” ECF 37, PgID 1679. The record indicates otherwise. Dr. Shaver has worked—and continues to work—with Respondent's competitors. A “competitor” is “a rival” or “one selling or buying goods or services in the same market as another.” Rheumatology Diagnostics Lab'y, Inc. v. Aetna, Inc., No. 12-cv-05847, 2015 WL 1744330, at *10 (N.D. Cal. Apr. 15, 2015) (quotation omitted). Put another way, competitors are “persons endeavoring to do the same thing and each offering to perform the act, furnish the merchandise, or render the service better or cheaper than his rival.” Id. (cleaned up). Here, Dr. Shaver has worked for Respondent's competitors in the specific field of Respondent's business: autonomous vehicles. His research is funded by companies such as John Deere and Caterpillar that are developing—with Dr. Shaver's assistance—autonomous trailers. ECF 43, PgID 1741; ECF 43-2, PgID 1757; ECF 43-5, PgID 1811. Additionally, Dr. Shaver speaks at symposia and conferences about automated vehicles. ECF 43-2, PgID 1769. Those events may very well be attended by competitors. And no evidence suggests that Dr. Shaver's work with competitors will not continue.

Plaintiff argued that the only relevant competitor Dr. Shaver worked for was Peloton Technology, which focuses only on truck platooning and is now out of business. ECF 37, PgID 1689. But Dr. Shaver's work for Peloton Technology was related to autonomous driving, which is the field in which Respondent operates. ECF 14, PgID 890; ECF 35, PgID 1652–53. And contrary to Plaintiff's assertion, the fact that Dr. Shaver worked for one of Respondent's competitors in the past makes it likely that he will do so again in the future. See ECF 35, PgID 1653. Indeed, were he to review Respondent's source code, Dr. Shaver would become arguably even more marketable to competitor companies. Dr. Shaver thus fits squarely within the prohibition of the Delaware protective order, which prohibits review of protected materials by any expert who, “as of the time of retention,” is “expected to become a competitor of any Defendant.” ECF 15-2, PgID 1124. Plaintiff's objection therefore falls short.

In all, the Court will grant the motion for a protective order as to all three categories of protected materials. The Court will also grant Plaintiff's motion to strike Respondent's surreply because Respondent failed to request leave to file a surreply from the Court. Last, the Court will deny as moot Plaintiff's motion to expedite consideration of its objections to the R&R.

*6 WHEREFORE, it is hereby ORDERED that the motion for a protective order [15] is GRANTED.

IT IS FURTHER ORDERED that the motion to strike Respondent's surreply [47] is GRANTED.

IT IS FURTHER ORDERED that Plaintiff's objection to the R&R [37] is DENIED.

IT IS FURTHER ORDERED that the motion to expedite consideration of Plaintiff's objections to the R&R [38] is DENIED AS MOOT.

SO ORDERED.