Engineers move all of the time. They start at one company that makes pizza oven accessories and related widgets. They bring that company to the delicious heights of excellence, authoring patent after patent in their pursuit of the perfect crust. Then, having achieved all anyone could hope for, they move on to a competing pizza oven accessory conglomerate, to do it all over again.
That being the case, its surprising we don't see more disputes like the one in Signode Industrial Group LLC v. Polychem, LLC, C.A. No 22-519-VAC-CJB, D.I. 94 (D. Del. Aug. 10, 2022). Like our metaphorical Pizzaneer, Flavio Finzo worked for Signode for many years and was a named inventor on a couple patents in suit. After retiring he started a consulting firm that worked with Polychem to develop their competing product (something to do with straps, totally no pizza involved, I am just hungry).
Signode then moved for a protective order to prohibit the defendant from "eliciting or receiving" any confidential or privileged information from Mr. Finzo, alleging that several facts referenced in the answer could only have come from his confidential and/or privileged knowledge. Defendant agreed that they had not and would not elicit any privileged information, and agreed to treat any confidential information pursuant to the existing protective order. Judge Burke held that these concessions were enough, stating:
even if Mr. Finzo may have (or might in the future) share certain of Plaintiff’s confidential information with Defendant’s counsel, Plaintiff has failed to explain how, were the Court not to issue a new protective order, this would cause Plaintiff a “clearly defined and serious injury.” After all, there is a protective order already in effect in this case. (D.I. 26) . . . And if Plaintiff wants to know what facts Mr. Finzo actually did share with Defendant’s counsel, its attorneys can at least ask Mr. Finzo this during his deposition . . . .
Id. at 3.
Interestingly, the Court made this ruling despite a TRO from a Swiss (home of Signode) court prohibiting Mr. Finzo from "sharing any trade/or manufacturing secrets of [Plaintiff], including disclosing any facts in connection with the Asserted Patents, the underlying technologies or the evaluation, testing, development, and commercialization thereof to [Defendant or its counsel].” Id. at 4.
the Court (at least absent further briefing on the issue in the future) is not inclined to alter discovery procedures in this case in light of the Swiss Court’s issuance of the TRO. Indeed, the Court is having a hard time seeing how this litigation could reasonably press forward were Mr. Finzo in fact prohibited from “disclosing any facts in connection with the Asserted Patents”; as an inventor on two of the patents-in-suit, his testimony about such facts is likely to be very important in this case.
Id.
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