UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

GLOBAL MATERIAL 

TECHNOLOGIES, INC., a New York 

Corporation, 

 Plaintiff, 

 v. 

DAZHENG METAL FIBRE CO., LTD., 

et al., 

 Defendants. 

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No. 12 CV 1851 

Magistrate Judge Young B. Kim 

September 23, 2015 

MEMORANDUM OPINION and ORDER 

In this diversity suit involving the meltdown of an international business 

relationship, metal fiber manufacturer Global Material Technologies, Inc. (“GMT”) 

sued Dazheng Metal Fibre Co., Ltd. (“DNZ”) and Dazheng Metal Fibre Co., Ltd. 

d/b/a ChuanGuPing (“Tru Group”), both foreign corporations organized under 

Chinese law, and Chinese citizen Dong Jue Min (collectively, “the defendants”), 

alleging that DNZ and Tru Group misappropriated GMT’s trade secrets and used 

GMT’s confidential customer information to lure away its customers. The case is 

now approaching the end of the fact-discovery phase, during which GMT sought and 

received a number of documents that are designated as being for “Attorney’s Eyes 

Only.” Before the court are Plaintiff’s Motion to Remove the “Attorneys’ Eyes Only” 

Designations on Certain Documents Produced by Tru Group, (R. 238), and 

Plaintiff’s Motion to Remove the “Attorneys’ Eyes Only” Designations on Documents 

Produced by Third-Party Respondent Federal-Mogul Holdings Corporation, 
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(R. 246). For the following reasons, the first motion is granted and the second 

motion is granted in part and denied in part: 

Background 

 GMT originally filed this suit in the United States District Court for the 

Middle District of Tennessee. (R. 1.) In its amended complaint GMT identifies 

itself as a manufacturer of various metallic wool products that outsourced some of 

its manufacturing operations to DNZ from 2003 through 2007. (R. 38, Am. Compl. 

¶¶ 8, 11.) GMT alleges that it was DNZ’s primary customer from 1996 through 

2009 and that it had a 25% ownership interest in DNZ. (Id. ¶¶ 12-13.) It alleges 

that by way of this “unique business relationship” DNZ gained access to GMT’s 

confidential and proprietary customer information and competitive pricing 

strategies. (Id. ¶¶ 15, 18.) GMT alleges that DNZ eventually “usurped this 

information and used it to identify and contact GMT customers” and ultimately 

offered them “a pricing scheme based upon GMT’s confidential pricing scheme.” (Id. 

¶ 19.) According to GMT, “DNZ, through Tru Group, and possibly through other 

subsidiary companies of DNZ, including but not limited to Seamarky Industrial, 

Ltd., used (and still uses) its confidential knowledge of GMT’s pricing scheme in 

determining the pricing scheme it offered (and still offers) to GMT customers.” (Id. 

¶ 45.) These allegations form the basis of GMT’s claim that the defendants violated 

the Uniform Trade Secrets Act. (Id. ¶¶ 113-118.) 

 About a year after the suit was filed, the court in Tennessee entered a twotiered protective order that had been agreed to by the parties. (R. 50.) The 
3

protective order limits the disclosure of confidential material—defined as “any 

document, testimony, statement and/or information produced pursuant to discovery 

requests and/or revealed during depositions in this matter”—to the parties, 

potential and retained expert witnesses, attorneys of record, and counsel’s staff 

personnel on a need to know basis. (Id. ¶¶ 1-2.) Additionally, the protective order 

allows the parties to designate confidential material as “attorneys’ eyes only” where: 

the disclosing party and its counsel believe in good faith that the 

material contains proprietary information . . . including but not limited 

to material constituting or containing trade secrets or other 

confidential research, development, financial, or commercial 

information, that the disclosing party reasonably believes is of such a 

nature and character that unlimited disclosure of such information to 

the receiving party will be harmful to the disclosing party or to its 

business or will provide the receiving party a competitive advantage 

over the disclosing party. 

(Id. ¶ 3.) Three months after the court entered the protective order, in March 2012, 

the court granted DNZ’s motion to transfer the case to the Northern District of 

Illinois. (R. 67.) In the course of discovery this court recognized that the protective 

order entered in the Middle District of Tennessee “is still in full force and effect.” 

(R. 154.) 

 According to the briefs the parties submitted in connection with the current 

motions, in July 2014 Tru Group produced two groups of documents labelled with 

the attorneys’ eyes only (“AEO”) designation. The first group consists of email 

correspondence dated from October 2009 through April 2010 between a former Tru 

Group sales employee and third-party customer Federal-Mogul Corporation. 

(R. 238, Pl.’s Mem. at 2 & Sealed Ex. A.) The second group consists of about 60 
4

pages of invoices dated from July 2010 through August 2011 between Tru Group 

and Federal-Mogul and its affiliates. (Id. at 2 & Sealed Ex. B.) Both groups of 

documents convey then-contemporaneous pricing information, payment terms, and 

general identification of product specification numbers. Additionally, during 

discovery Federal-Mogul has produced approximately 520 documents under the 

AEO designation consisting of invoices and communications conveying pricing, 

payment terms, testing, and product specifications for GMT, DNZ, and non-party 

Seamarky, along with internal Federal-Mogul documents that convey information 

regarding, among other things, its supplier selection process, pricing, and 

purchasing strategies. (R. 260, Federal-Mogul Resp. at 4.) In the current motions, 

GMT seeks an order removing the AEO designation from the documents produced 

by the defendants and Federal-Mogul, arguing that the “confidential” designation is 

sufficient to protect their legitimate interests. 

Analysis

 Federal Rule of Civil Procedure 26(c)(1) allows a court to, “for good cause, 

issue an order to protect a party or person from annoyance, embarrassment, 

oppression, or undue burden or expense, including . . . (G) requiring that a trade 

secret or other confidential research, development, or commercial information not 

be revealed or be revealed only in a specified way.” But because there is a 

“presumption of public access to discovery materials,” the court is required to make 

a good-cause determination before entering a protective order shielding relevant 

information from public disclosure. Citizens First Nat’l Bank of Princeton v. 
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Cincinnati Ins. Co., 178 F.3d 943, 946 (7th Cir. 1999). As the Seventh Circuit has 

recognized, “[m]any a litigant would prefer that the subject of the case—how much 

it agreed to pay for the construction of a pipeline, how many tons of coal its plant 

uses per day, and so on—be kept from the curious (including its business rivals and 

customers), but the tradition that litigation is open to the public is of very long 

standing.” Union Oil Co. of Cal. v. Leavell, 220 F.3d 562, 567 (7th Cir. 2000). 

Accordingly, the party seeking a protective order must show specific facts showing 

good cause to justify the protective order. Culinary Foods, Inc. v. Raychem Corp., 

151 F.R.D. 297, 300, 303 (N.D. Ill. 1993). 

 Once a protective order has been entered, the party seeking to protect 

documents under its shield “must continue to show good cause for confidentiality 

when challenged.” In re: Bank One Securities Litig. First Chi. Shareholder Claims, 

222 F.R.D. 582, 586 (N.D. Ill. 2004). To make that showing, the designating party 

must show that disclosure will result in a “clearly defined and serious injury,” by 

pointing to “specific demonstrations of fact.” In re: Aqua Dots Prods. Liab. Litig., 08 

CV 2364, 2009 WL 1766776, at *1, *4 (N.D. Ill. June 23, 2009) (quotations omitted). 

The “harm must be significant, not a mere trifle.” Cipollone v. Liggett Grp., Inc., 

785 F.2d 1108, 1121 (3rd Cir. 1986). Conclusory statements—including “broad 

allegations of potential harm” or competitive injury—are insufficient to meet the 

good cause standard. Chicago Mercantile Exch., Inc. v. Technology Research Grp., 

LLC, 276 F.R.D. 237, 241 (N.D. Ill. 2011); Culinary Foods, 151 F.R.D. at 303. “If 
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there is any doubt as to whether the material should be sealed, it is resolved in 

favor of disclosure.” In re: Bank One, 222 F.R.D. at 586. 

 Although two-tiered protective orders contemplating that some documents 

will be produced with a heightened AEO designation are not uncommon, the AEO 

designation should “only be used on a relatively small and select number of 

documents where a genuine threat of competitive or other injury dictates such 

extreme measures.” Team Play, Inc. v. Boyer, No. 03 C 7240, 2005 WL 256476, at 

*1 (N.D. Ill. Jan. 31, 2005). The AEO designation must be used selectively because 

discovery and trial preparation are made significantly more difficult and expensive 

when an attorney cannot make a complete disclosure of relevant facts to a client 

and because it leaves the litigant in a difficult position to assess whether the 

arguments put forward on its behalf are meritorious. Motorola, Inc. v. Lemko Corp., 

08 CV 5427, 2010 WL 2179170, at *5 (N.D. Ill. June 1, 2010). To justify the AEO 

designation, the designating party must do more than show that it is a competitor of 

the receiving party or that the documents in question disclose information about the 

designating party’s relationships with other competitors. Id. at *4. Instead, the 

designating party needs to show that the disclosure of the particular AEOdesignated materials to even a small number of the other party’s personnel would 

risk the disclosure of sensitive competitive information. Id. Conclusory statements 

are insufficient to show that a “slight expansion of disclosure” puts the designating 

party at an appreciable risk. Id. 
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A. Tru Group Documents 

In the motion directed at Tru Group’s document production, GMT seeks an 

order removing the AEO designation from two groups of documents consisting of 

correspondence, packing lists, and invoices between DNZ and Federal-Mogul during 

the period from 2009-2011. It seeks to have the defendants produce these 

documents subject to the less restrictive “confidential” designation. (R. 238.) GMT 

argues that the AEO designation is unjustified because the years-old pricing and 

specification information conveyed in the two groups of documents is stale and will 

not give GMT any competitive advantage in the current marketplace. It also argues 

that DNZ and Tru Group are no longer competitors with GMT, based on 

representations made by the defendants during discovery. Specifically, it points to 

an underlying discovery dispute stemming from the defendants’ admission that 

their document production was impacted by their decision to “liquidate” their 

computers in connection with what they described as “the process of winding down” 

DNZ and Tru Group, a process that began after this suit was filed. (Id. Ex. C, 

March 10, 2015 Ltr. at 3.) In a statement they filed with this court explaining that 

decision, the defendants represented that “[i]n March 2011, DNZ and Tru Group 

began to wind down their business operations” and “DNZ ceased exporting 

manufactured products.” (Id.) They further represented that in September 2011 

Tru Group “ceased all export sales” and in June 2011 “DNZ terminated its sales 

force and its relationships with independent sales representatives.” (Id.) The 

defendants also stated that DNZ and Tru Group “ceased all manufacturing 
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operations” in 2013. (Id. at 1.) Based on these representations, GMT argues that 

the AEO designation cannot be justified because by definition there can be no 

competitive threat to the defendants if they are no longer operating. 

In attempting to meet its burden as the designating party to show that there 

is good cause for maintaining the AEO designation on the challenged groups of 

documents, Tru Group has made only the kinds of broad allegations of unspecified 

harm that consistently have been found insufficient to justify the “extreme 

measure” of preventing a party’s attorneys from sharing the documents with their 

clients. See Team Play, 2005 WL 256476, at *1. Tru Group’s response to the 

current motion hinges on three blanket good-cause statements: (1) that disclosing 

the documents to “GMT employees would harm the business of both Tru Group and 

Federal-Mogul by causing GMT to gain an unearned competitive advantage over 

Tru Group”; (2) that disclosure would give GMT “unfair leverage over negotiations 

with Federal-Mogul”; and (3) that disclosure would harm Tru Group’s relationship 

with Federal-Mogul. (R. 245, Defs.’ Resp. at 1, 3.) Nowhere in its eight-page 

response does Tru Group elaborate on these assertions or describe with any 

particularity how these generalized harms would arise from allowing GMT’s 

attorneys to review the documents with a limited number of GMT employees. In 

particular, it has not addressed in any meaningful way GMT’s argument that this 

information is stale. Instead, it simply asserts that “GMT has cited no evidence 

that the pricing information is in fact stale.” (Id. at 4.) But as the party seeking to 

prevent GMT from reviewing the documents, it is Tru Group’s burden, not GMT’s, 
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to establish good cause and explain with particularity why the information is not 

stale. See Motorola, 2010 WL 2179170, at *4. 

 With respect to the staleness question, Tru Group has not explained with any 

particularity how allowing GMT employees to view years-old invoices and 

specifications could give GMT any unfair competitive advantage in the current 

market or lead to unfair leverage over the customers identified in the documents. 

Nor has it submitted any affidavits supporting its assertions. The relevant 

documents are all dated between October 2009 and August 2011, making even the 

most recent pricing data conveyed therein more than four years old. (R. 238, Pl.’s 

Mem. Sealed Exs. A & B.) Tru Group has not explained how four year-old pricing 

information could cause the kind of “unwarranted commercial harm” that would 

justify preserving its AEO designation. See Aqua Dots, 2009 WL 1766776, at *2; see 

also In re: Bank One, 222 F.R.D. at 588 (noting that party “must attempt to winnow 

out properly confidential information in order to justify sealing” (internal quotation 

omitted)); United States v. Int’l Bus. Mach. Corp., 67 F.R.D. 40, 46 (S.D.N.Y. 1975) 

(noting that “disclosure of two-and-a-half-year-old sales data” will not result in a 

“clearly defined, serious injury”). Particularly, Tru Group has made no attempt to 

show that the information in these documents could be extrapolated by GMT to 

predict future pricing strategies or otherwise give it a current competitive 

advantage. Contrast with Stanislaus Food Prods. Co. v. USS-POSCO Indus., 1:09-

cv-00560-LJO-BAM, 2012 WL 6160468, at *2 (E.D. Cal. Dec. 11, 2012). In short, 

Tru Group’s broad allegations of harm are insufficient to show that the years-old 
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information poses any on-going competitive threat to the defendants or any 

unwarranted commercial advantage to GMT. See Chicago Mercantile Exchange, 

276 F.R.D. at 241. 

 Even assuming for the purposes of argument that Tru Group had established 

that the years-old information is not stale, there remains the disturbingly murky 

question regarding whether Tru Group and DNZ still can be considered competitors 

with GMT. In other words, given what can only be described as vague and shifting 

explanations the defendants have given as to whether Tru Group and DNZ are still 

functioning companies, the court is unable to determine whether the AEOdesignated information has any on-going value to either company. As GMT points 

out, and as noted above, on March 10, 2015, the defendants filed a statement with 

this court in response to GMT’s request for more information as to why they had 

produced so few documents from electronic storage devices in response to GMT’s 

discovery requests. (R. 238, Pl.’s Mem. Ex. C, March 10, 2015 Ltr.) The defendants 

explained the paltry production by admitting that they had “liquidated” their 

computers as part of a “winding down” process that began in March 2011. (Id. at 3.) 

Nowhere in that letter did the defendants suggest that the “winding down” process 

had been reversed or that they were continuing to operate. In its response to the 

current motion, Tru Group asserts that nothing in the letter “indicates that DNZ 

and Tru Group do not intend to re-start their operations upon resolution of this 

litigation.” (R. 245, Defs.’ Resp. at 4.) Actually, that is exactly the impression that 

the letter gave. If DNZ and Tru Group foresaw a possibility that their businesses 
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were merely on hold temporarily, why would they “liquidate” their equipment? The 

impression the letter was no doubt intended to, and in fact did, convey was that 

DNZ and Tru Group liquidated their computers because they had gone out of 

business. And yet now, faced with the persuasive argument that disclosure of the 

AEO-designated documents could provide no competitive disadvantage to defunct 

companies, Tru Group now says that the defendants “continue to do some 

business—and nothing indicates that they will not resume full production.” (Id.) It 

is hard not to see this assertion as an about-face in the defendants’ representations 

to this court. 

 The defendants’ obligation to justify the continued AEO designation in the 

face of GMT’s challenge is to identify a clearly defined and serious injury. See Aqua 

Dots, 2009 WL 1766776, at *1. Given Tru Group’s failure to explain why the data 

should not be considered stale, let alone support that explanation with evidence, 

coupled with what can only be described as the defendants’ shifting position with 

respect to DNZ’s and Tru Group’s operational status, the court is unable to give 

them the benefit of the doubt with respect to their statements regarding the 

competitive disadvantage at stake in downgrading the two relevant groups of 

documents from AEO to confidential status. See id. at *2 (noting that allegations of 

“competitive disadvantage” not enough to show good cause). Those conclusions 

leave the court only with Tru Group’s assertion that good cause exists because the 

documents are protected by the confidentiality clause in a supply agreement 

between Tru Group and Federal-Mogul. Specifically, under the supply agreement 
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Tru Group and Federal-Mogul agreed “not to disclose the terms and conditions of 

this Agreement to any third party without obtaining written prior consent of the 

other party.” (R. 245-2, Defs.’ Resp. Ex. B ¶ 16.10.) 

 There are several reasons why Tru Group’s reliance on the supply agreement 

in this context does not help it to meet the good cause threshold. First, the mere 

existence of a confidentiality agreement is not in itself a valid reason to object to 

discovery. See JAB Distribs., LLC v. London Luxury, LLC, 09 CV 5831, 2010 WL 

4008193, at *4 (N.D. Ill. Oct. 13, 2010) (“Defendant proffers no case in support of its 

argument that a confidentiality agreement precludes a party from producing 

documents pursuant to a protective order.”); Mike v. Dymon, Inc., 95-2405-EEO, 

1996 WL 606362, at *3 (D. Kan. Oct. 17, 1996) (“That plaintiff may have a 

contractual, legal obligation not to reveal confidential information of [third-party] is 

not a valid objection to the requested discovery.”). Second, it appears that Tru 

Group is balancing its argument on an assertion of Federal-Mogul’s confidentiality 

rights. For example, it argues that Federal-Mogul “continues to expressly assert its 

right to maintain the most restrictive designation” for this information, pointing to 

a November 2014 letter in which counsel for Federal-Mogul asserted that the 

continued AEO designation is proper. (R. 245, Defs.’ Resp. at 4-5.) But Tru Group 

has not shown that it has standing to assert Federal-Mogul’s confidentiality 

interests. See Krumwiede v. Brighton Assoc., LLC, 05 CV 3003, 2006 WL 2644952, 

at *2-*3 (N.D. Ill. Sept. 12, 2006). Federal-Mogul has not moved to intervene in the 

case to respond to the current motion and Tru Group has not attempted to show 
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that it has standing to advocate a non-party’s confidentiality position. See id. 

Third, Tru Group’s assertion that Federal-Mogul has not agreed to remove the AEO 

designations from the documents relevant to this motion appears to stand on shaky 

ground. (R. 245, Defs.’ Resp. at 5 n.1.) Not only did Federal-Mogul lodge no 

objection to the current motion with this court, but in its response to the second 

motion seeking to redesignate AEO documents from its own production (discussed 

in Section B below), Federal-Mogul suggests that the barrier to removing the AEO 

designation on DNZ documents has been erected by the defendants. Specifically, it 

states that “DNZ has denied Federal-Mogul’s requests to waive the confidentiality 

provision and/or approve of any attempt to remove the AEO designation” with 

respect to DNZ pricing and payment documents. (R. 260, Federal-Mogul Resp. at 

14.) That assertion suggests that the defendants are pointing to Federal-Mogul’s 

confidentiality rights as a shield despite Federal-Mogul’s willingness to waive those 

rights with respect to at least some subset of DNZ documents. For all of these 

reasons, Tru Group has not shown that its obligations under the supply agreement 

present good cause to prevent the redesignation of the two groups of documents at 

issue here.

It is important to note that an additional consideration in determining 

whether the continued AEO designation is appropriate is to weigh the risks to the 

defendants from disclosure against GMT’s need to view the information in order to 

litigate its claims. See Autotech Techs. Ltd. P’ship v. Automationdirect.com, Inc., 

237 F.R.D. 405, 412 (N.D. Ill. 2006). Great care must be taken to prevent the 
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unnecessary curtailment of a party’s trial preparation. Farnsworth v. Procter & 

Gamble Co., 758 F.2d 1545, 1547 (11th Cir. 1985). But trial preparation and trial 

itself are made significantly more difficult and expensive when a party’s attorney is 

unable to share with the party facts that are material to its prosecution of the case. 

See Motorola, 2010 WL 2179170, at *5. That is especially true here, where GMT’s 

claims turn in part on whether it can prove that the defendants misappropriated its 

customer and pricing information in an attempt to lure away its business. (See, 

e.g., R. 38, Am. Compl. ¶ 104.) As GMT points out, the disputed documents are 

relevant to helping it determine the scope of its claims. Tru Group argues that 

GMT can get around this problem by preparing lists of its historic pricing structures 

for its counsel to compare to the AEO-designated documents. (R. 245, Defs.’ Resp. 

at 7.) While that approach might work in some contexts, because Tru Group has 

not convincingly shown that it will be harmed by allowing GMT representatives to 

view these two groups of documents, it has not shown that the added difficulty and 

expense inherent in its proposal are justified. That said, this court is sensitive to 

the need to protect commercial information and agrees that the two groups of 

documents relevant here should maintain their “confidential” status under the first 

tier of the protective order. 

B. Federal-Mogul’s Documents 

 In its related motion targeting documents produced by Federal-Mogul, GMT 

argues that Federal-Mogul improperly designated 2,800 pages of its 6,480-page 

document production as AEO. (R. 246, Pl.’s Mem. at 2.) The AEO-designated 
15

documents include invoices dated April-May 2010 for DNZ products shipped by Tru 

Group to Federal Mogul and dated between September 2011 and 2013 for DNZ 

products shipped by Seamarky to Federal-Mogul, as well as internal and external 

communications between Federal-Mogul and Delano Mok or Alex Chan regarding 

shipments, and pricing of DNZ products or otherwise regarding Federal-Mogul’s 

commercial relationship with DNZ and Seamarky. (Id. at 2-3.) According to 

Federal-Mogul’s response, however, only three categories remain in dispute: (1) 

documents revealing DNZ pricing, payment terms, testing, and product 

specifications; (2) similar documents as category (1) pertaining to Seamarky; and (3) 

documents that convey Federal-Mogul’s supplier selection process, purchasing 

strategies, and procedures for commodity purchasing, testing, specifications, and 

purchasing frequency. (R. 260, Federal-Mogul Resp. at 4.) GMT provided this court 

only with samples of the AEO-designated documents (filed under seal). That 

sampling is sufficient because “[c]ourts are not required to make good cause 

determinations on a document-by-document basis as such a requirement would 

impose an excessive burden upon the court in cases with thousands of documents at 

issue.” In re: Northshore Univ. Healthsystem, 254 F.R.D. 338, 342 (N.D. Ill. 2008). 

 Because Federal-Mogul is not a party to this lawsuit, the good-cause showing 

it must make in defense of its AEO designation is less demanding than the burden 

shouldered by the defendants. See Federal Trade Comm’n v. OSF Healthcare Sys., 

11 CV 50344, 2012 WL 1144620, at *1 (N.D. Ill. Apr. 5, 2012). A relaxed good-cause 

standard is necessary because “[n]on-party organizations are limited in their ability 
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to control the manner in which parties use their confidential commercial 

documents.” In re: Northshore, 254 F.R.D at 343. In other words, because a nonparty is not physically present to protect its confidential information during court 

proceedings and depositions, it “will invariably risk a greater potential for injurious 

disclosure than parties.” Id. Having considered its arguments with respect to each 

category of disputed documents, this court concludes that Federal-Mogul has 

persuasively met its reduced good-cause burden with respect to the majority of the 

documents it produced subject to the AEO designation. 

 1. DNZ Documents Located in Group Exhibit A

GMT first seeks to remove the AEO designation from a group of documents it 

filed under seal as Group Exhibit A, pertaining to invoices, product quality 

analyses, and product-related communications between DNZ and Federal-Mogul. 

These documents include invoices and packing lists conveying information that is 

substantially similar, but not identical, to the documents at issue in the motion 

addressed in Section A of this opinion.1 In fact, GMT simply adopts its arguments 

set forth in the previous motion in support of its motion to remove the AEO 

designation from this group of Federal-Mogul documents. (See R. 246, Pl.’s Mem. at 

7.) As described in Section A above, the court is granting the motion directed to the 

documents produced by Tru Group because in responding to GMT’s motion Tru 

 

1 Despite the similarity among the documents in Exhibit B filed with GMT’s first 

motion and Group Exhibit A filed with the current motion, this court’s review 

reveals no overlap among those documents. In other words, from the sample GMT 

provides here, it appears that none of the documents that this court is ordering 

redesignated with respect to the first motion are part of the production FederalMogul seeks to protect with the AEO designation in response to the current motion. 
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Group failed to make the requisite good-cause showing in defense of its AEO 

designation. But in contrast to Tru Group’s submission, which conveyed only 

conclusory assertions in support of Tru Group’s AEO designations, Federal-Mogul’s 

submission amply demonstrates the current competitive harm potentially caused by 

a court order redesignating the AEO-designated documents sampled in Group 

Exhibit A. That evidence comes in the form of an affidavit from its Purchasing 

Plant Manager, Allen Cleveland. (R. 260-4, Federal-Mogul Resp. Ex. C, Cleveland 

Aff.) In that affidavit Cleveland explains that internal decisions and business 

strategies regarding the supply of steel fibers remain relevant today even if the 

documents are five to seven years old. (Id. ¶ 6.) Specifically, he explains that there 

are only eight to ten global suppliers in the steel fibers market offering that 

commodity during any given year. (Id. ¶ 7.) Cleveland explains that because steel 

fiber prices vary among suppliers yearly, Federal-Mogul issues worldwide requests 

for quotes on an annual basis. (Id.) He asserts that disclosure of Federal-Mogul’s 

confidential purchasing and supplier quality information would harm FederalMogul by jeopardizing the competitive bidding process among its suppliers. (Id. 

¶¶ 9-10.) According to Cleveland, even the historic information would provide GMT 

with an unfair insight into business dealings of non-party suppliers in a way that 

could distort current bidding processes. (Id.) This evidence is sufficient to satisfy 

Federal-Mogul’s lower burden to show that there is good cause supporting its AEO 

designation with respect to the documents in Group Exhibit A. See Federal Trade 

Comm’n, 2012 WL 1144620, at *1. 
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Because Federal-Mogul established good cause, the burden shifts to GMT as 

the party seeking discovery “to show why the court should allow dissemination of 

the materials.” See Culinary Foods, 151 F.R.D. at 300. GMT makes two points that 

weigh in favor of reducing the Group A designation from AEO to confidential. First, 

as described above, GMT points to Federal-Mogul’s assertion that “DNZ has denied 

Federal-Mogul’s requests to waive the confidentiality provision and/or approve of 

any attempt to remove the AEO designation.” (R. 260, Federal-Mogul Resp. at 14.) 

This assertion suggests that DNZ is using its confidentiality agreement with 

Federal-Mogul to cloak information that Federal-Mogul otherwise would be willing 

to redesignate, even though it is unclear whether and to what extent DNZ remains 

in the business of manufacturing, exporting, or selling metal fibers. Second, GMT 

submitted with its motion Group Exhibit F, which includes a series of packing lists, 

invoices, and product analyses that are substantively similar to those represented 

in Group Exhibit A, except they are dated September and October 2010 instead of 

April and May 2010. (R. 246, Pl.’s Mem. Sealed Group Exs. A & F.) Despite their 

substantive similarity, Federal-Mogul produced the documents in Group Exhibit F 

with only the confidential designation. In its response to GMT’s motion, FederalMogul ignores this inconsistency and fails to explain why it assigned differing 

designations to groups of documents that appear to convey the same kinds of 

substantive information. As GMT points out, it has a substantial interest in being 

able to view these documents with its attorneys because the information conveyed 

therein goes to the heart of its trade secrets claims. For these reasons, GMT has 
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shown that the documents in Group Exhibit A should be redesignated as 

confidential. 

2. Seamarky Documents Located in Group Exhibit B 

Next GMT seeks removal of the AEO designation from a group of documents 

filed under seal at Group Exhibit B, pertaining to Federal-Mogul’s supply 

arrangements with Seamarky, a non-party competitor of GMT. GMT admits that 

these documents reveal pricing strategies, product characteristics, and/or supply 

quantity and quality data, but argues nonetheless that they do not qualify for AEO 

protection because it insists that they are stale. As noted above, Cleveland’s 

affidavit provides support for Federal-Mogul’s AEO designation under the lower 

good-cause threshold for non-parties, because his statements provide evidence that 

despite their age the relevant documents could skew current negotiations and 

strategies in the relatively limited global supply market for metal fiber. Moreover, 

GMT does not dispute that Seamarky is currently its direct competitor. Courts 

have made clear that the AEO designation is particularly appropriate in situations 

where the confidential information might otherwise be used to gain a commercial 

advantage by a direct competitor. See, e.g., In re: Zimmer NexGen Knee Implant 

Prods. Liab. Litig., 11 CV 5468, 2013 WL 6490343, at *4 (N.D. Ill. Dec. 10, 2013). 

GMT also argues that redesignation of Group Exhibit B is appropriate 

because, according to it, the documents “raise grave questions concerning the 

veracity” of the defendants’ representations that they are unrelated to Seamarky. 

(R. 246, Pl.’s Mem. at 9.) Although GMT acknowledges that Federal-Mogul and 
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Seamarky are both non-parties who have a confidentiality agreement that governs 

the AEO-designated documents, it asserts that the defendants could give approval 

to waive the designation given what it describes as “unassailable evidence” that 

Seamarky and the defendants are affiliated. (Id. at 8.) But the current motion does 

not provide an appropriate forum for this court to decide the substantive issues 

surrounding whether Seamarky is an extension of the defendants’ businesses. 

Although the Group Exhibit B documents may be relevant to this aspect of GMT’s 

claim, they undeniably convey the kind of substantive pricing and supply 

information that is appropriate for AEO designation, and Federal-Mogul has 

adequately rebutted GMT’s argument that the information is stale. Moreover, with 

respect to this group of documents the competitive risk to Federal-Mogul and 

Seamarky that stems from disclosure outweigh the need for GMT’s attorneys to 

share the documents with their client in order to analyze GMT’s claim regarding 

the alleged overlap between Seamarky and the defendants. Accordingly, the motion 

is denied with respect to the documents filed under seal in Group Exhibit B. 

3. Federal-Mogul Communications Located in Group Exhibits C 

 and D 

 Given the lower good-cause threshold that applies to non-party FederalMogul, see Northshore, 254 F.R.D at 342-43, Cleveland’s affidavit is sufficient to 

demonstrate that Federal-Mogul had good cause to produce most of the documents 

sampled in GMT’s Group Exhibits C and D under the AEO designation. These 

documents generally consist of communications between Federal-Mogul and the 

defendants’ representatives Delano Mok and Alex Chan regarding DNZ products 
21

and internal Federal-Mogul communications relating to its decision to purchase 

products from the defendants and Seamarky in 2009 and 2010. In attempting to 

illustrate that these communications are either stale or otherwise inappropriately 

designated as AEO, GMT directs specific arguments to a sampling of small groups 

of these communications. For example, GMT quotes fairly extensively from a set of 

emails between Mok and Federal-Mogul dated December 2009 through May 2010, 

produced at FM 6004-6011, to argue that these communications are merely 

“embarrassing” to the defendants but “not so sensitive that they merit a heightened 

AEO designation.” (R. 246, Pl.’s Mem. at 12.) But those emails reveal the kinds of 

price proposals, pricing formulas, and product specifications that courts have found 

deserving of AEO status. See, e.g., Stanislaus, 2012 WL 6160468, at *5. Given 

Cleveland’s representations that this information can reverberate in the current 

market, the court is unable to conclude that they are stale. Similarly, GMT 

challenges Federal-Mogul’s internal report analyzing its decision to change 

suppliers in 2010 and an email discussing that report, produced at FM 6066-6088. 

(R. 246, Pl.’s Mem. at 13-14.) But because these documents convey Federal-Mogul’s 

supply strategies and product requirements, their disclosure is also potentially 

harmful to the extent they can be interpreted to predict its future purchasing 

strategies, as Cleveland’s affidavit suggests. See Stanislaus, 2012 WL 6160468, at 

*2 (noting that historical information is not stale if it “can be extrapolated to predict 

future strategies and practices”). 
22

 Federal-Mogul has not made a convincing argument, however, as to why 

there is good cause to maintain the AEO designation for the documents produced in 

Group Exhibit C at FM 6107 and 4090-4093. As GMT points out, these emails 

convey a discussion about a change in Federal-Mogul’s supplier but they do not 

reveal any product information, pricing details, or sourcing strategy. In defense of 

its AEO designation Federal-Mogul argues that the emails reveal how a supplier’s 

location impacts its sourcing decisions. (R. 260, Federal-Mogul Resp. at 10.) But 

nothing in the emails comes close to a reveal of strategy. Instead, the documents 

convey only employees’ attempts to get to the bottom of what appears to have been a 

supply reporting mistake. This is not the kind of highly sensitive commercial 

information that justifies the “extreme measure” of an AEO designation. See Team 

Play, 2005 WL 256476, at *1. 

Additionally, it must be noted that GMT’s challenge to the AEO designation 

of two sub-sets of documents within Group Exhibits C and D have gone unanswered 

by Federal-Mogul in its response. GMT points out that Federal-Mogul produced an 

agreement dated November 14, 2013, in two separate places in its production, one 

under the AEO designation and one labelled only “confidential.” (R. 246, Pl.’s Mem. 

Ex. D at FM 3660-3662 & FM 0003-0004.) Similarly, GMT points out that FederalMogul produced a series of emails twice, once at FM 3636-3643 under the 

“confidential” label and once at FM 4156-4162 with the AEO designation.2 Because 

 

2 There are small differences in one of the emails in this duplicate email string 

(compare FM 003636-003638 with FM 004156-004157), but the version produced 

under the confidential designation is the more detailed version. The information in 
23

Federal-Mogul’s response is silent with respect to this point, the court agrees with 

GMT that the AEO designation on these duplicated documents should be removed. 

Finally, the court notes that in its response Federal-Mogul requests an order 

requiring GMT to reimburse it for the fees and costs it incurred in responding to the 

current motion and any future document redesignations. (R. 260, Federal-Mogul 

Resp. at 14-15.) But because the court has determined that a portion of its AEO 

designations are to be reduced to confidential status, and because Federal-Mogul 

has cited no cases supporting an argument that it is entitled to fees and costs in this 

specific context, that request is denied. Going forward, however, GMT should 

identify for Federal-Mogul which documents it considers improperly designated in 

light of this opinion before engaging in dialogue to discharge its meet and confer 

obligations under Federal Rule of Civil Procedure 37(a)(1) and Local Rule 37.2. 

Conclusion

 For the foregoing reasons, Plaintiff’s Motion to Remove the “Attorneys’ Eyes 

Only” Designations on Certain Documents Produced by Tru Group is granted. The 

documents filed under seal as Exhibits A and B to that motion, (R. 238-1; R. 238-2), 

are to be treated as “confidential” under the protective order as of October 8, 2015, 

as long as the defendants have not filed an objection to this ruling pursuant to Rule 

72(a). Plaintiff’s Motion to Remove the “Attorneys’ Eyes Only” Designations on 

Documents Produced by Third-Party Respondent Federal-Mogul Holdings 

Corporation is granted in part and denied in part. The motion is granted with 

 

the version produced as AEO at FM 004156 and 004157 appears in the version 

produced as confidential at FM 003636 through 003637. 
24

respect to the documents filed as Group Exhibit A, the documents filed in Group 

Exhibit C as FM 6107 and 4090-4093, and the documents filed in Group Exhibit D 

as FM 3660-3662 and FM 4156-4162. Those documents are to be treated as 

“confidential” under the protective order as of October 8, 2015, as long as FederalMogul has not filed an objection to this ruling pursuant to Rule 72(a). The motion is 

denied in all other respects. 

 ENTER:

 

 ____________________________________ 

 Young B. Kim 

 United States Magistrate Judge