Jurisdiction – Trade Secret Misappropriation

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7^th Circuit Court of Appeals

Case Name: Heraeus Kulzer, GmbH v. Biomet, Inc., et al.

Case No.: 17-1674

Officials: FLAUM, KANNE, and ROVNER, Circuit Judges.

Focus: Jurisdiction – Trade Secret Misappropriation

Plaintiff-appellant Heraeus Kulzer, GmbH (“Heraeus”) brought this action in the Northern District of Indiana under 28 U.S.C. § 1782. That statute allows a party to file a petition in a federal district court to obtain discovery for use in a foreign proceeding. Here, Heraeus sought to obtain discovery from defendants-appellees Biomet, Inc. and Biomet Orthopedics, LLC (collectively, “Biomet”) to use in its trade secret misappropriation case against Biomet in Germany. Biomet produced discovery subject to a series of stipulated protective orders that limited Heraeus’s ability to use or disseminate certain discovery materials outside of the German proceeding and this § 1782 action.

After obtaining discovery from Biomet and submitting it to the German court, the German court ruled in Heraeus’s favor and enjoined Biomet from manufacturing or distributing any products developed using the misappropriated information. In its ruling, the German court cited and quoted several documents that were produced in this § 1782 proceeding and thus subject to the stipulated protective orders. Suspicious that Biomet was continuing to sell products made with Heraeus’s trade secrets outside of Germany, Heraeus subsequently brought actions in several other European countries to enforce the German judgment. Heraeus also filed three motions to modify the district court’s protective orders in this § 1782 action. In those motions, Heraeus asked the district court to exclude the documents that the German court relied on from the scope of the protective orders and/or to impose restrictions on Biomet’s internal use of those documents. Heraeus claims that these modifications are necessary so it may submit those documents to the foreign tribunals presiding over the European enforcement proceedings and protect its trade secrets. The district court denied all three motions.

Because Heraeus failed to timely appeal the district court’s first and second orders denying the requested relief, we conclude that we lack jurisdiction to review those orders now. With respect to the district court’s third and final order, we hold that the district court did not abuse its discretion by denying Heraeus’s request to impose restrictions on Biomet’s internal use of the documents it produced.

Affirmed

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Attorney Derek A. Hawkins is the managing partner at Hawkins Law Offices LLC, where he heads up the firm’s startup law practice. He specializes in business formation, corporate governance, intellectual property protection, private equity and venture capital funding and mergers & acquisitions. Check out the website at www.hawkins-lawoffices.com or contact them at 262-737-8825.