United States District Court, E.D. Louisiana
UNITED STATES OF AMERICA, ET AL.
CYTOGEL PHARMA, LLC
ORDER AND REASONS
Van Meerveld United States Magistrate Judge.
the Court is the Motion for Entry of Protective Order filed
by plaintiff the Administrators of the Tulane Educational
Fund (“Tulane”), and joined by plaintiff the
United States acting through its Department of Veterans
Affairs (the “United States” or “VA”
and with Tulane, the “Plaintiffs”) (Rec. Doc.
102). For the following reasons, the Motion is GRANTED in
part and DENIED in part. The Parties shall submit by ex parte
motion a new proposed Protective Order in accordance with the
Court's ruling herein, within 7 days. Oral argument
scheduled for November 1, 2017, is CANCELLED.
lawsuit was filed by the Plaintiffs against defendant Cytogel
Pharma, LLC (“Cytogel”) seeking a ruling that
Plaintiffs are the sole owners of U.S. Patent No. 8, 716, 436
(the “436 Patent”) and related patent
applications and that counter-claim defendant Dr. James E.
Zadina (“Dr. Zadina”) and his colleague Dr.
Laszlo Hackler are the true inventors of the 436 Patent. In
its counterclaim, Cytogel alleges that Tulane, the United
States, and Dr. Zadina misappropriated its trade secrets and
confidential information. Cytogel alleges that Tulane
licensed its patented opioid-peptide technology to Cytogel
and that Cytogel retained Dr. Zadina, a Tulane professor, as
a consultant regarding the development of opioid compounds.
Cytogel alleges that the 436 Patent was developed by Dr.
Zadina using confidential Cytogel information. Cytogel seeks
a declaratory judgment that it is the owner of the 436 Patent
and also asserts claims for breach of contract, infringement
of other patents, misappropriation of trade secrets and other
state law claims.
parties agree that a protective order is appropriate in this
case to protect confidential documents. However, they have
come to an impasse regarding certain provisions of a
proposed Protective Order provides for two types of
confidential information: “Protected Information”
and “Protected Information - Attorneys' Eyes
Only.” Paragraph 7 of the proposed order lists the
persons to whom “Protected Information” may be
disclosed. Paragraph 8 lists the persons to whom
“Protected Information - Attorneys' Eyes
Only” may be disclosed by reference to the
subparagraphs of Paragraph 7 that refer to “outside
counsel, ” “consultant or independent expert,
” “litigation support services, ”
“witnesses in any deposition or other proceeding in
this Action, ” and “the Court.” Although
Protected Information can be disclosed to “in-house
counsel” and “designated employees, ”
Protected Information-Attorneys' Eyes Only cannot be
disclosed to these categories of persons. Cytogel proposes to
use the term “Designated Information” to refer to
both Protected Information and Protected
Information-Attorneys' Eyes Only.
first issue the parties dispute is the description of
“outside counsel” for purposes of Paragraph 7 and
8. Tulane proposes the following: “outside attorneys
for the Parties in the Action.” Cytogel proposes
instead “outside counsel of record for Parties in this
Action” and “outside counsel whom the Parties may
consult regarding this Action who have executed an agreement
in the form of Exhibit A attached hereto.” A
correlating change proposed by Cytogel in Paragraph 9 would
require that the designating party be provided with notice
and an executed copy of Exhibit A for outside counsel covered
by its proposed subparagraph (ii). If the other party
objects, Paragraph 9 requires that the party object within
five business days and that the party attempt to negotiate
the issue prior to coming to court.
complains that Cytogel's proposal would allow any
attorney to review the protected materials, even a Cytogel
board member or competitor as long as that person was
an attorney. Tulane further complains that the proposed
change would allow disclosure of Plaintiffs' information
without ever telling the Plaintiffs or allowing them an
opportunity to object. They point out that the proposed
Protective Order provides a procedure for disclosure of
Attorneys' Eyes Only information to individuals not
listed in Paragraph 8. That procedure requires that prior to
disclosure to a consultant, the party must provide the other
parties with notice and an opportunity to object. The notice
must include the person's name and title, present
employer, a curriculum vitae, and a copy of Exhibit A.
responds that it must be allowed to consult with other
outside counsel of its choosing about the litigation. Cytogel
points out that its proposal would not result in disclosure
without anyone “ever telling Plaintiffs” since
its change to Paragraph 9 would require notice to the
designating party. Cytogel adds that it would agree to
incorporate a waiting period of 2 business days between
notice and disclosure so each proposed person can be
considered between the parties on a case by case basis.
Cytogel adds that Tulane improperly references the mechanism
for disclosing Designated Information to people who are not
covered explicitly by the Protective Order. Cytogel points
out that this provision only applies to consultants, and
Tulane has taken the position that consulting attorneys would
not be covered.
parties present reasonable concerns. The Court finds the best
resolution is that non-record outside counsel be included in
the Protective Order, but that such outside counsel who is
not counsel of record be subject to the Paragraph 9 procedure
for consultants (that is, prior notice with an opportunity to
object). Accordingly, it appears this could be achieved by
(1) incorporating Cytogel's proposed changes to the
definition of outside counsel, and (2) deleting Cytogel's