UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

NORTHERN DIVISION

HEMLOCK SEMICONDUCTOR 

CORPORATION, et al.,

Plaintiffs,

v.

KYOCERA CORPORATION,

Defendant.

Case No. 15-CV-11236 (TLL) (PTM)

Honorable Thomas L. Ludington

KYOCERA CORPORATION

Counterclaimant,

v.

HEMLOCK SEMICONDUCTOR 

CORPORATION, et al.,

Counterdefendants.

KYOCERA CORPORATION’S MEMORANDUM OF

LAW IN OPPOSITION TO HEMLOCK’S MOTION TO

MODIFY THE PROTECTIVE ORDER

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TABLE OF CONTENTS

Page

i

I. INTRODUCTION ...........................................................................................1

II. RELEVANT FACTS.......................................................................................2

A. Hemlock Files This Action, and Kyocera Files in Tokyo 

District Court.........................................................................................2

B. The Parties Stipulate to, and the Court Enters, a Protective 

Order......................................................................................................3

C. Hemlock Refuses to Participate Meaningfully in Discovery................4

D. Hemlock Has Used the Clause It Now Attacks to Keep 

Relevant Discovery from Kyocera........................................................6

E. Hemlock Asks to Modify the Protective Order But Does Not 

File a Motion. ........................................................................................8

III. ARGUMENT...................................................................................................9

A. Hemlock Fails to Show that It Has Good Cause, or Even a 

“Minimal Need,” to Belatedly Modify the Protective Order to 

Which It Agreed. ...................................................................................9

1. Hemlock Has Not Demonstrated that It Has Any Need 

for Modification of the Protective Order. .................................11

2. Any Need to Use Discovery Materials in Japan Was 

Entirely Foreseeable at the Time Hemlock Agreed to the 

Protective Order. .......................................................................13

3. Kyocera Has Relied on the Terms of the Protective Order 

as Written. .................................................................................14

4. Hemlock’s Request for Modification Is Vague and 

Overbroad..................................................................................17

B. The Cases Hemlock Cites in Support of Its Motion to Modify 

Are Inapposite. ....................................................................................18

C. The Factors Courts Consider When Evaluating a Request Under 

28 U.S.C. § 1782 Are Relevant and Weigh Against Modifying 

the Protective Order.............................................................................21

IV. CONCLUSION..............................................................................................24

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TABLE OF AUTHORITIES

Page(s)

ii

FEDERAL CASES

Advanced Micro Devices, Inc. v. Intel Corp.,

2004 WL 2282320 (N.D. Cal. Oct. 4, 2004) ......................................................22

Aetna Inc. v. Blue Cross Blue Shield of Mich.,

2015 WL 1499002 (E.D. Mich. Mar. 31, 2015).................................................19

In re “Agent Orange” Prod. Liability Litig.,

104 F.R.D. 559 (E.D.N.Y. 1985)........................................................................20

In re Air Crash Disaster at Detroit Metropolitan Airport on Aug. 16, 

1987, 130 F.R.D. 634 (E.D. Mich. 1989)...........................................................17

In re Application of Sumar,

123 F.R.D. 467 (S.D.N.Y. 1988)........................................................................24

Bayer AG & Miles, Inc. v. Barr Labs., Inc.,

162 F.R.D. 456 (S.D.N.Y. 1995)......................................................10, 13, 14, 16

City of Hartford v. Chase,

942 F.2d 130 (2d. Cir. 1991) ........................................................................15, 16

In re Hallmark Capital Corp.,

534 F. Supp. 2d 951 (D. Minn. 2007).................................................................24

Infineon Techs. AG v. Green Power Techs. Ltd.,

247 F.R.D. 1 (D.D.C. 2005).................................................................. 10, passim

Intel Corp. v. Advanced Micro Devices, Inc.,

542 U.S. 241 (2004)......................................................................................21, 22

INVISTA N. Am. S.a.r.l v. M & G USA Corp.,

2013 WL 1867345 (D. Del. Mar. 28, 2013)...........................................17, 20, 21

In re Jenoptik AG,

109 F.3d 721 (Fed. Cir. 1997) ............................................................................20

Jochims v. Isuzu Motors Ltd.,

145 F.R.D. 499 (S.D. Iowa 1992).......................................................................13

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TABLE OF AUTHORITIES

(continued)

Page(s)

iii

Kerasotes Mich. Theatres, Inc. v. Nat’l Amusements, Inc.,

139 F.R.D. 102 (E.D. Mich. 1991)...............................................................19, 20

In re Knoxville News Sentinel Co.,

723 F.2d 470 (6th Cir. 1983) ..............................................................................19

In re Kolon Industries Inc.,

No. 09-00058, Dkt. No. 1163 (E.D. Va June 1, 2011).......................................21

Martindell v. Int’l Tel. & Tel. Corp.,

594 F.2d 291 (2d Cir. 1979). ..............................................................................15

Meyer Goldberg, Inc. of Lorain v. Fisher Foods, Inc.,

823 F.2d 159 (6th Cir. 1987) .......................................................................passim

MSC.software Corp. v. Altair Eng’g, Inc.,

2008 WL 2478313 (E.D. Mich. June 17, 2008)...................................................9

Murata Mfg. Co., Ltd. v. Bel Fuse, Inc.,

234 F.R.D. 175 (N.D. Ill. 2006)..........................................................................10

Omega Homes, Inc. v. Citicorp. Acceptance Co.,

656 F. Supp. 393 (W.D. Va. 1987).....................................................................16

Oracle Corp. v. SAP AG,

2010 WL 545842 (N.D. Cal. Feb. 12, 2010)......................................................20

Peterson v. Wright Med. Tech., Inc.,

2013 WL 655527 (C.D. Ill. Feb. 21, 2013) ..................................................17, 18

In re Posco,

794 F.3d 1372 (Fed. Cir. 2015) ..........................................................................21

Robb v. Ishee,

2008 WL 440440 (S.D. Ohio Feb. 13, 2008) .....................................................19

In re Se. Milk Antitrust Litig.,

666 F. Supp. 2d 908 (E.D. Tenn. 2009)..............................................................10

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TABLE OF AUTHORITIES

(continued)

Page(s)

iv

SEC v. TheStreet.Com,

273 F.3d 222 (2d Cir. 2001) .........................................................................10, 15

United Nuclear Corp. v. Cranford Ins. Co.,

905 F.2d 1424 (10th Cir. 1990) ..........................................................................18

United States ex rel. Pogue v. Diabetes Treatment Ctrs. of Am.,

2004 WL 2009414 (D.D.C. May 17, 2004)..................................................14, 18

Viskase Corp. v. W.R. Grace & Co.-Conn.,

1992 WL 13679 (N.D. Ill. Jan. 24, 1992)...........................................................13

Waite, Schneider, Bayless & Chesley Co. L.P.A. v. Davis,

2012 WL 3600106 (S.D. Ohio Aug. 21, 2012) ..................................................10

FEDERAL STATUTES

28 U.S.C. § 1782......................................................................................................21

FEDERAL RULES 

Fed. R. Civ. P. 26(c)...........................................................................................10, 15

OTHER AUTHORITIES

MANUAL FOR COMPLEX LITIGATION (FOURTH) § 11.432 (2004) ..............................9

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I. INTRODUCTION

The protective order in this case limits use of confidential materials to this 

litigation. Hemlock agreed to this limitation at a time when it was fully aware of 

the separate litigation between Hemlock and Kyocera in Japan. Restricting the use 

of confidential materials produced in the U.S. action to the U.S. action is 

appropriate because the procedures for discovery under Japanese law are far 

narrower than the discovery permitted under U.S. law. Hemlock apparently 

recognizes this fact, because it has not asked the Japanese Court for the discovery 

at issue here. Instead, by asking this Court to change the protective order, 

Hemlock is seeking to use U.S. discovery procedures to make an end run around 

Japanese procedures. 

Hemlock’s request to modify the protective order satisfies none of the 

factors that courts regularly consider in determining such requests. Hemlock 

agreed to the protective order even though it knew the Japanese litigation was 

underway. Hemlock fails to explain why modification is necessary or why it has 

not sought discovery of the documents in the Japanese action, let alone identify 

particular documents for which modification is required. Kyocera has relied on the 

protective order. And the requested modification is substantially overbroad. These 

considerations have repeatedly led courts to reject requests to modify protective 

orders. 

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By its Motion, Hemlock asks this Court to give it an unfair advantage. 

Hemlock itself has resisted even the most basic discovery; for example, it has 

refused to produce deposition transcripts of employees who were deposed in the 

related Deutsche Solar and Green Energy Technology matters, it has withheld 

documents about the negotiation of the contracts at issue, and it has relied on the 

exact clause it challenges here to deny Kyocera access to documents that Hemlock 

produced in related litigation. At the same time, Hemlock waited months before 

bringing this last-minute, expedited Motion to Modify the Protective Order in this 

case to allow it to use documents obtained here in the Japanese litigation. The 

Court should reject Hemlock’s belated Motion to Modify the Protective Order.

II. RELEVANT FACTS

A. Hemlock Files This Action, and Kyocera Files in Tokyo District 

Court.

On April 1, 2015, Hemlock sued Kyocera in this Court alleging anticipatory 

breach of three of the four supply agreements between the parties (“Agreements IIII”). (Dkt. No. 1.) Two days later, on April 3, Kyocera sued Hemlock in Tokyo 

District Court for violating Japanese antitrust law. (Declaration of John Tierney 

(“Tierney Decl.”), Dkt. No. 92-2 ¶ 3.) That same day, the General Manager of 

Kyocera’s Legal Division sent an email to one of Hemlock’s senior executives and 

its in-house counsel stating that “Kyocera has filed a complaint regarding 

Hemlock’s violation of Japanese antitrust law before Tokyo district court,” and 

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attaching a copy of the complaint. (Declaration of Christian G. Andreu-von Euw 

(“AvE Decl.”) ¶ 1, Exs. A, B.) 

Just a few weeks later, on April 29, 2015, Hemlock amended its complaint 

in this Court to allege that Kyocera had filed the Tokyo District Court action and to 

add a claim for an anti-suit injunction (which Hemlock has since dropped). (Dkt. 

No. 4 ¶¶ 72-82.) Hemlock attached a certified English translation of the Tokyo 

complaint as an exhibit to that amended complaint. (Id., Ex. 1.) Kyocera formally 

served Hemlock with the Tokyo District Court action on June 27, 2015.1

B. The Parties Stipulate to, and the Court Enters, a Protective 

Order.

After all of that had taken place, the parties agreed on the protective order at 

issue in this Motion. Specifically, on July 13, 2015, Kyocera’s counsel sent an 

email seeking Hemlock’s agreement to a proposed protective order that Hemlock

authored in the related Deutsche Solar suit. (AvE Decl. ¶¶ 3, 23, Ex. C.) 

Like the protective order Hemlock signed in its prior lawsuits, the proposed

protective order included a paragraph providing that any information marked as 

confidential and produced in discovery “shall be utilized by the Receiving party 

and its counsel only for purposes of this litigation and for no other purposes.” (Id.

 1 Also on June 27, 2015, Kyocera served Hemlock with an English translation of 

Kyocera’s first brief regarding jurisdiction in the Tokyo District Court, filed April 

30, 2015. This brief argued that the supply agreements’ exclusive jurisdiction 

clauses were the result of Hemlock’s abuse of its superior bargaining position.

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¶ 4, Ex. D; see also Dkt. No. 20 (“Protective Order”) ¶ 6 (emphasis added).) This 

clause is found in the protective orders Hemlock signed in its other customer 

lawsuits. (Compare AvE Decl. Exs. M, N, with Dkt. No 20.)

Hemlock agreed to the proposed order without suggesting any changes, and 

the parties submitted it to the Court on July 22, 2015. (AvE Decl. ¶ 3, Ex. C; Dkt.

No. 20.) This Court signed and entered the Stipulated Protective Order—including 

the provision barring the parties from using confidential discovery information 

other than in the U.S. litigation—on July 29, 2015. (Dkt. No. 20.)

C. Hemlock Refuses to Participate Meaningfully in Discovery.

On July 23, 2015, Kyocera served requests for production of documents on 

Hemlock. (AvE Decl. ¶ 5, Ex. E.) Hemlock refused to timely produce documents. 

(Id. ¶ 6, Ex. F.) Hemlock still had not produced any documents on September 4, 

2015, when it served its own set of document requests on Kyocera. (Id. ¶ 13, Ex. 

H.) Nonetheless, Kyocera timely produced responsive documents on October 8, 

2015. (Id. ¶ 14, Ex. I.) Kyocera’s document production included correspondence 

the parties exchanged while negotiating the polysilicon supply agreements at issue 

in this litigation and in the litigation in Japan—including the two documents that 

Hemlock apparently now wants to use in the Tokyo action. (Id. ¶ 16; see Brief in 

Support of Motion to Modify Protective Order (hereinafter, “Mot.”), Dkt. No. 92-

1, 7-8 & Exs. J, K.)

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It was not until more than a month later, on November 13, 2015, that 

Hemlock finally produced its first set of documents. (See AvE Decl. ¶ 7.) That 

first production consisted of 208 documents Hemlock had previously produced to 

Deutsche Solar in its related litigation against Deutsche Solar. (Id. ¶ 8.) Those 

208 documents comprise less than 2% of the documents Hemlock produced to 

Deutsche Solar, despite the fact that Kyocera asked Hemlock for all documents 

produced in that related suit. (Id.; see also id. Ex. E, RFP No. 9.) 

Hemlock’s present assertion that it “has now produced more documents than 

Kyocera,” (Mot. at 8), is misleading, as the reality is that most of Hemlock’s 

production has consisted of documents that have little to do with the parties’ claims 

or defenses. For example, the majority of the documents Hemlock produced after 

November 13 were purchase orders, invoices, and other documents related to 

routine shipments containing evidence that was not contested by the parties and 

has little, if any, relevance to any claims and defenses. (AvE Decl. ¶ 9.) 

Notably absent from Hemlock’s production are documents pertaining to the 

negotiations of the supply agreements at issue in this litigation. For example, 

Hemlock produced over 80 meeting minute documents and similar internal 

documents pertaining to meetings between Hemlock and Kyocera describing 

negotiations from Hemlock’s point of view, but those documents described efforts 

to renegotiate the contracts after the polysilicon market plummeted, and efforts to 

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manage the Hemlock/Kyocera relationship after the agreements were signed. (See

AvE Decl. ¶ 10.) None of these 80 documents describe the original negotiations 

that led to any of the agreements at issue, and Kyocera’s counsel has been unable 

to locate in Hemlock’s production internal documents describing those 

negotiations. (Id.) Similarly, less than 5% of the emails Hemlock produced are 

from the four-year time period when the parties were negotiating the supply 

agreements at issue, and none of those emails evidence Hemlock’s internal 

discussions about those negotiations. (Id. ¶ 11.)

Kyocera did, of course, produce documents showing its own internal 

deliberations during those negotiations. (See id. ¶ 12.) They are among the very 

documents that Hemlock now apparently seeks permission to use in Tokyo. (See 

Tierney Decl. ¶¶ 10, 14.)

D. Hemlock Has Used the Clause It Now Attacks to Keep Relevant 

Discovery from Kyocera.

Not only did Hemlock refuse to produce relevant documents, but it also used 

the very clause in the protective order it now seeks to change to block Kyocera 

from obtaining relevant documents from willing third parties in related litigation 

about near-identical supply agreements. On July 24, 2015, Kyocera served 

subpoenas on Deutsche Solar and Green Energy Technology (“GET”) seeking 

documents that had been produced during discovery in those companies’ ongoing 

lawsuits against Hemlock. (Dkt. Nos. 24-3, 24-4, 24-5, 24-6.) Hemlock moved to 

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quash the subpoenas. (Dkt. No. 24.) Hemlock argued that Deutsche Solar and 

GET could not produce the documents because Kyocera’s request was a “attempt 

to short-circuit the proper discovery process” in this case. (Id. at 6.) Hemlock 

explained that the protective orders covering the Deutsche Solar and GET 

documents state that “Confidential Information and Highly Confidential 

Information shall be utilized only for purposes of this litigation and for no other 

purposes” (Id. (emphasis added by Hemlock).) 

Hemlock took the position that “[w]hether those documents are relevant to 

this case and therefore properly subject to discovery should be decided after 

Hemlock reviews the requests for production, makes any necessary objections, 

meets and confers with the Defendant, and the parties engage in motion practice, 

should that be necessary—the Rule 34 procedure which Kyocera now seeks to 

avoid.” (Id. (emphasis added).) The Court granted the motion to quash, and 

instructed Kyocera to use the discovery process in this case to obtain the material 

directly from Hemlock in this case. (Dkt. No. 61, at 36.)

Hemlock, however, refused to produce those documents, including 

deposition transcripts of Hemlock witnesses, to Kyocera. On February 9, 2016, 

Kyocera filed a motion to compel seeking deposition transcripts from Hemlock’s 

litigation with Deustche Solar and GET associated with witnesses that may testify 

in this case. (Dkt. No. 67.) The motion is currently pending.

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E. Hemlock Asks to Modify the Protective Order But Does Not File a 

Motion.

On November 13, 2015, Hemlock approached Kyocera about modifying the 

protective order to allow Hemlock to use in the Tokyo action documents produced 

by Kyocera and marked “confidential” in the U.S. litigation. (See Mot., Ex. G.) 

On November 25, 2015, Kyocera declined to consent to modifying the protective 

order for that purpose.2

 (Id., Ex. I.) Hemlock did not move to modify the 

protective order at that time.

More than four months later, on March 23, 2016, Hemlock again asked 

Kyocera to consent to modify the protective order. (Id., Ex. L.) Kyocera 

responded on March 30 that it would not agree to the modification. (Id., Ex. M.) 

Kyocera explained in its response that Hemlock had agreed to the protective order

limiting use of confidential documents to the U.S. proceeding months after 

Hemlock learned of the action in Japan. 

Two days later, on Friday, April 1, 2016, Hemlock told Kyocera that given 

its “time constraints in Japan,” it would move to modify the protective order “on 

Monday, or Tuesday at the latest.” (AvE ¶ 18, Ex. L.) Hemlock in fact filed its 

Motion to Modify the Protective Order a week later, but asked the Court to 

 2 Hemlock implies that Kyocera agreed to modify the protective order and changed 

its mind. In reality, Kyocera’s counsel told Hemlock that he could not provide a 

definitive answer until speaking with Kyocera, and Kyocera did not agree. (Mot., 

Ex. I.)

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expedite the briefing schedule and shorten Kyocera’s time to respond by a week. 

(Dkt. Nos. 91, 92.) The Court granted Hemlock’s Motion to Expedite with 

modifications, setting Kyocera’s deadline to respond for Friday, April 22, 2016. 

(Dkt. No. 93.)

Through all this time, Hemlock has never asked the Tokyo District Court to 

order Kyocera to produce documents. (AvE Decl. ¶ 19.) This is in spite of the fact 

that, as Hemlock acknowledges, Japanese procedure provides a mechanism for 

Hemlock to do so. (Tierney Decl. ¶ 15.)

III. ARGUMENT

A. Hemlock Fails to Show that It Has Good Cause, or Even a 

“Minimal Need,” to Belatedly Modify the Protective Order to 

Which It Agreed.

The central consideration governing a motion to modify a protective order is 

the need to “balance the potential harm to the party seeking protection against the 

requesting party’s need for the information.” MANUAL FOR COMPLEX LITIGATION

(FOURTH) § 11.432 (2004); MSC.software Corp. v. Altair Eng’g, Inc., 2008 WL 

2478313, at *1 (E.D. Mich. June 17, 2008). In considering this balance, courts 

look to a number factors, including: (1) the requesting party’s need for the 

modification;3 (2) whether the need for the disclosure sought was foreseeable when 

 3 Hemlock asserts that the Sixth Circuit does not require a showing of “good 

cause” in order to grant a request to modify a protective order. (Mot. at 9-10 & 

n.9.) But courts within the Sixth Circuit have applied a good cause standard to 

(Footnote continues on next page.)

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the parties first entered into the protective order; (3) whether the party opposing 

modification relied on the protective order; and (4) whether the requested 

modification is broad or confined to specifically relevant information. See, e.g.,

Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., 234 F.R.D. 175, 179 (N.D. Ill. 2006);

Infineon Techs. AG v. Green Power Techs. Ltd., 247 F.R.D. 1, 2 (D.D.C. 2005);

Bayer AG & Miles, Inc. v. Barr Labs., Inc., 162 F.R.D. 456, 464-67 (S.D.N.Y. 

1995), disagreed with on other grounds by SEC v. TheStreet.Com, 273 F.3d 222, 

229 n.7 (2d Cir. 2001). Applying these factors demonstrates that the balance 

between protection and disclosure weighs against modifying the protective order to 

accommodate Hemlock’s last-minute request to use confidential discovery 

obtained in the U.S. litigation in Japan.

(Footnote continued from previous page.)

such requests. See, e.g., Waite, Schneider, Bayless & Chesley Co. L.P.A. v. Davis, 

2012 WL 3600106, at *5 (S.D. Ohio Aug. 21, 2012) (“[A] protective order is 

always subject to modification or termination for good cause . . . .” (internal 

quotation marks omitted)); In re Se. Milk Antitrust Litig., 666 F. Supp. 2d 908, 914 

(E.D. Tenn. 2009) (same). The cases Hemlock cites to support its claim that the 

standard for modification requires only that the requesting party show that it has a 

“minimal” need for the modification are materially distinguishable from the instant 

case, see infra III.B. Regardless, whether the standard is described as good 

cause—which is the same standard for entering a protective order in the first place, 

Fed. R. Civ. P. 26(c)—or minimal need, Hemlock does not dispute that a party 

must have some legitimate reason for seeking a modification. Under the 

circumstances here, Hemlock does not.

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1. Hemlock Has Not Demonstrated that It Has Any Need for 

Modification of the Protective Order.

Hemlock asserts that it needs to submit to the Tokyo District Court 

documents produced and designated as confidential in the U.S. litigation in order 

to rebut Kyocera’s claim of Japanese jurisdiction. (Mot. at 1-2.) But even at this 

late date, Hemlock fails to identify a single document that it would like to submit 

to the Tokyo District Court that it is prevented from submitting by the terms of the 

protective order.

Hemlock’s brief in support of modification identifies five specific 

documents it believes are relevant to the question of jurisdiction in Japan. (Tierney 

Decl. ¶¶ 8-11.) Of these, three have already been submitted to the Tokyo District 

Court, while the remaining two are emails that Kyocera sent to Hemlock in the 

ordinary course of business.

4 (Id.) Hemlock does not say whether it possesses 

 4 The three documents submitted to the Tokyo District Court were submitted under 

seal. (Tierney Decl. ¶ 7; AvE. Decl. ¶ 20.) As such, only the Tokyo Court, 

Hemlock, and Kyocera have access to those documents and their contents. 

Hemlock’s Motion to Modify and the accompanying Tierney Declaration, both of 

which were publicly filed without redactions, nevertheless describe the content of 

these three documents in detail. (Mot. at 7-8; Tierney Decl. ¶¶ 8-9, 11.) Similarly, 

although Hemlock afforded Kyocera the opportunity to move to file Exhibits J and 

K to its Motion under seal—which Kyocera did on April 18, 2016 (Dkt. No. 95)—

Hemlock’s Motion and the Tierney Declaration publicly describe the contents of 

these exhibits as well. In describing these sealed and confidential materials, 

Hemlock has violated both the spirit and the letter of the Tokyo District Court’s 

sealing procedures and the protective order. (Protective Order ¶ 12(a) (providing 

that “any pleading, brief or memorandum which reproduces, paraphrases or 

(Footnote continues on next page.)

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these two emails independently of Kyocera’s production (and, if not, why not). By 

its plain terms, the protective order does not restrict a party’s use of its own 

documents obtained independently of the litigation. (Protective Order ¶ 21 (“This 

Stipulation has no effect upon, and shall not apply to, the parties’ use of their own 

Discovery Material for any purpose. Nothing herein shall impose any restrictions 

on the use or disclosure by a party of documents, materials, or information 

designated as Confidential that has been obtained lawfully by such party 

independently of the proceedings in this Litigation.”).)

Hemlock’s Motion is otherwise silent as to which documents it might wish 

to submit to the Tokyo District Court. Given Hemlock’s failure to show any need 

for relief as to the handful of documents it identifies and its failure to identify any 

additional documents that it wishes to use in Japan, the Motion provides no basis to 

modify the protective order as to any document, let alone to modify the order to 

permit use in the Japan litigation of any and all documents designated as 

confidential in this litigation.

(Footnote continued from previous page.)

discloses Confidential Information shall provide all other parties with seven days’ 

written notice of its intent to file such material with the Court . . . . The 

Confidential Information shall not be filed until the Court renders a decision on 

the motion to seal” (emphasis added.).)

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2. Any Need to Use Discovery Materials in Japan Was 

Entirely Foreseeable at the Time Hemlock Agreed to the 

Protective Order.

Foreseeability is a significant factor that informs whether a court should 

grant modification of a protective order. Courts have regularly rejected requests to 

modify protective orders when a party fails to negotiate for a provision to address 

an issue that was reasonably foreseeable at the time of the negotiation. See

Jochims v. Isuzu Motors Ltd., 145 F.R.D. 499, 502 (S.D. Iowa 1992) (“Not 

surprisingly, a party’s oversight in not negotiating a provision in a protective order 

concerning a matter which should have been reasonably foreseeable at the time of 

the agreement has been held to not constitute good cause for relief from the 

protective order.”); see also Bayer, 162 F.R.D. at 466-67 (rejecting request to 

modify protective order where need for individual’s access to protected documents 

was foreseeable at the time the parties negotiated the protective order); Viskase 

Corp. v. W.R. Grace & Co.-Conn., 1992 WL 13679, at *4 (N.D. Ill. Jan. 24, 1992) 

(same). 

Here, Hemlock was aware of the Tokyo proceedings more than three months 

before it agreed to the protective order that expressly limited the use of discovery 

materials to the U.S. litigation. Moreover, Hemlock has been specifically aware of

the jurisdictional issues in Japan since June 27, 2015, at the latest. Hemlock 

provides no explanation for its failure to raise this highly foreseeable issue at the 

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time it agreed to the protective order. The current Motion should be denied on this 

basis alone. 

3. Kyocera Has Relied on the Terms of the Protective Order 

as Written.

A party’s reliance on a protective order is another significant factor that 

militates against modification. See, e.g., Meyer Goldberg, Inc. of Lorain v. Fisher 

Foods, Inc., 823 F.2d 159, 163 (6th Cir. 1987); Infineon, 247 F.R.D. at 2; United 

States ex rel. Pogue v. Diabetes Treatment Ctrs. of Am., 2004 WL 2009414, at *4

(D.D.C. May 17, 2004). Here, Kyocera has promptly produced documents broadly 

construed as responsive to Hemlock’s requests with very limited objections based 

on relevance or burden. Kyocera was able to do so because of the protections 

afforded by the negotiated protective order. Had the protective order not been in 

place, Kyocera’s production process would have been considerably slower and 

more burdensome for both parties. Accord Bayer, 162 F.R.D. at 467 (denying 

request to modify protective order, in part, because party opposing modification 

had produced voluminous discovery with “only limited objections to the relevance 

and burden of the requests” based on the assurances provided by the protective 

order).

Hemlock’s argument that Kyocera’s assertion that it relied on the protective 

order amounts to an admission that Kyocera would not have complied with its

legal obligations regarding discovery absent the protective order is baseless. The 

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purpose of a protective order is to encourage an expeditious, cooperative discovery 

process by allowing the parties to exchange information without risking exposure 

of that information in other settings. See TheStreet.Com, 273 F.3d at 229 

(“[P]rotective orders issued under Rule 26(c) serve ‘the vital function . . . of 

secur[ing] the just, speedy, and inexpensive determination of civil disputes . . . by 

encouraging full disclosure of all evidence that might conceivably be relevant. 

This objective represents the cornerstone of our administration of civil justice.’ . . . 

Without an ability to restrict public dissemination of certain discovery materials 

that are never introduced at trial, litigants would be subject to needless ‘annoyance, 

embarrassment, oppression, or undue burden or expense.’” (citing Martindell v. 

Int’l Tel. & Tel. Corp., 594 F.2d 291, 295 (2d Cir. 1979), and Fed. R. Civ. P. 

26(c))). Protective orders work precisely because they enable the parties to forego 

meritorious, but time-consuming and burdensome, legal objections to disclosure

and onerous document review. Parties do not “rely” on protective orders as a 

prerequisite to complying with the law; they rely on them as a means to promote 

efficiency.

The case law bears this out, demonstrating that parties routinely rely on 

protective orders to expedite discovery, reduce the burden on the parties and the 

court created by serial discovery disputes, and encourage settlement. See, e.g.,

City of Hartford v. Chase, 942 F.2d 130, 136 (2d. Cir. 1991) (finding that “a 

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judicial assurance of confidentiality was a prerequisite to the parties’ decision to 

settle their dispute”); Bayer, 162 F.R.D. at 467 (finding plaintiff had relied on

protective order based on representation that, “[i]n order to expedite the case, 

[plaintiff] made only limited objections to the relevance and burden of the requests. 

With the agreed protective order, the need to scrutinize every scientific document 

delivered in the production and consult on its importance was significantly 

reduced.”); accord Omega Homes, Inc. v. Citicorp. Acceptance Co., 656 F. Supp. 

393, 404 (W.D. Va. 1987) (recognizing that modifying protective order would 

allow plaintiff to “induc[e] broad disclosure under a set of ground rules” and then 

change rules to “avoid[] any limitations on itself”). Such is the case here as well.

Throughout the discovery process, Kyocera has further relied on this Court’s 

authority to enforce the protective order. In other words, this Court’s ability to 

enforce the protective order has assured Kyocera that confidential information may 

be disclosed in discovery without the risk that such information will be used 

outside the bounds of the protective order. But Hemlock’s Japanese counsel is not 

subject to this Court’s jurisdiction, and this Court will have no ability to enforce 

the protective order should Hemlock’s Japanese counsel violate it. Thus, despite 

Hemlock’s assertions to the contrary, (Mot. at 10-11), the protective order cannot 

be modified to allow Hemlock’s Japanese counsel access to Kyocera’s confidential 

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information without risking harm to Kyocera’s “legitimate secrecy interests.” 

Meyer Goldberg, 823 F.2d at 163 (internal quotation marks omitted).

4. Hemlock’s Request for Modification Is Vague and 

Overbroad.

The fact that Hemlock is seeking a sweeping modification to allow it to use 

in Japan all discovery obtained in this case also weighs against Hemlock. Contrary 

to Hemlock’s assertion that “courts across the country have unanimously granted 

cross-use of U.S. discovery materials in related litigation abroad” (Mot. at 13 

(original emphasis)), courts routinely reject overbroad and undifferentiated 

requests like Hemlock’s, and have generally required parties to tailor their requests 

and explain why those documents are relevant and important to the requesting 

party. See In re Air Crash Disaster at Detroit Metropolitan Airport on Aug. 16, 

1987, 130 F.R.D. 634, 637 (E.D. Mich. 1989) (denying modification, in part, 

because party seeking modification “failed to present those particularized proofs 

that are requisite to a modification of either protective order at issue”); see also 

INVISTA N. Am. S.a.r.l v. M & G USA Corp., 2013 WL 1867345, at *2 (D. Del. 

Mar. 28, 2013) (modification permissible where “the persons to whom such access 

[to confidential documents] would be provided are limited,” and the number of 

documents the party sought to submit to the foreign court was small); Peterson v. 

Wright Med. Tech., Inc., 2013 WL 655527, at *6 (C.D. Ill. Feb. 21, 2013)

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(distinguishing plaintiff’s request for documents from overbroad request in another 

case). 

The requested modification here falls squarely on the vague and overbroad 

end of the spectrum. Hemlock seeks permission to allow it to use in the Japanese 

proceedings any document produced and designated as confidential in the U.S. 

litigation, (Mot. at 1), without limiting this request to any specific documents or 

topics. This sweeping request should be denied.

B. The Cases Hemlock Cites in Support of Its Motion to Modify Are 

Inapposite.

The decision to modify a protective order is discretionary and case specific. 

E.g., United Nuclear Corp. v. Cranford Ins. Co., 905 F.2d 1424, 1427 (10th Cir. 

1990); Pogue, 2004 WL 2009414, at *2. Hemlock identifies no case in which a 

court has modified a protective order to allow broad disclosure of confidential 

materials when the party seeking the modification agreed to the order with full 

knowledge that materials covered by the protective order could be relevant to an 

ongoing foreign proceeding. Instead, Hemlock cites cases involving materially 

different factual situations.

In Meyer Goldberg, for instance, the party seeking to protect the information 

had previously filed the information with the court, albeit under seal. 823 F.2d at 

160. The Sixth Circuit found that this reduced the justification for keeping the 

information confidential in light of the “‘long-established [U.S.] legal tradition,’

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which recognizes ‘the presumptive right of the public’” to access judicial records, 

including sealed records. Id. at 163 (quoting In re Knoxville News Sentinel Co., 

723 F.2d 470, 473-74 (6th Cir. 1983)). Moreover, the Meyer Goldberg court 

expressed skepticism that the information had been properly sealed in the first 

instance. Id. (“The record in this case nowhere reflects a confidentiality relied 

upon by any party now before the court, nor does it explain exactly on what basis 

confidentiality was properly claimed to suppress potential antitrust conduct and 

information from public knowledge or from a party seeking to utilize this 

information in a related type of private antitrust action.”). No similar factors are 

present here.

In many other cases Hemlock cites, the party seeking to modify the 

protective order either was a third party that never agreed to the order in the first 

place, or was seeking modification in light of changed circumstances arising after 

the protective order was in place. See Aetna Inc. v. Blue Cross Blue Shield of 

Mich., 2015 WL 1499002, at *1 (E.D. Mich. Mar. 31, 2015) (modification sought 

based on discovery of allegedly illegal provisions in contracts obtained in 

discovery); Robb v. Ishee, 2008 WL 440440, at *1 (S.D. Ohio Feb. 13, 2008)

(modification sought by third-party death row inmate convicted of the same 

murder as petitioner in the case); Kerasotes Mich. Theatres, Inc. v. Nat’l 

Amusements, Inc., 139 F.R.D. 102, 103 (E.D. Mich. 1991) (modification sought by 

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plaintiff in similar antitrust action against same defendant); In re “Agent Orange” 

Prod. Liability Litig., 104 F.R.D. 559, 562 (E.D.N.Y. 1985) (modification sought 

by interest group representing members of settlement class), superseded by statute 

on other grounds as stated in TheStreet.Com, 273 F.3d at 233 n.11; see also Meyer 

Goldberg, 823 F.2d at 161 (action to intervene to obtain sealed material instituted 

by third party). Unlike Hemlock, which voluntarily agreed to the terms of the 

protective order knowing about the Japanese litigation, the parties seeking the 

information in these cases either never bargained to be bound by a protective 

order’s restrictions or could identify materially changed circumstances that created 

a need for modification.

In another set of cases, the party sought only a narrow modification that

either would allow disclosure of a limited number of documents or would restrict 

the uses for which the documents could be disclosed. See In re Jenoptik AG, 109 

F.3d 721, 721 (Fed. Cir. 1997) (seeking permission to submit portions of 

deposition transcripts to foreign court); INVISTA, 2013 WL 1867345, at *2

(seeking permission to submit twelve redacted documents to foreign court); Oracle 

Corp. v. SAP AG, 2010 WL 545842, at *3 (N.D. Cal. Feb. 12, 2010) (party sought 

permission to show documents to foreign counsel, not to submit documents to 

foreign court); Infineon, 247 F.R.D. at 2-3 (focusing on subset of discovery that 

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would only “possibly” be submitted to a foreign court). Neither limitation cabins 

Hemlock’s request here.

Finally, in In re Kolon Industries Inc., the party opposing modification of the 

protective order had itself been submitting documents produced and designated 

confidential under the U.S. protective order to a foreign court. No. 09-00058, Dkt. 

No. 1163, at 2 (E.D. Va. June 1, 2011). Hemlock does not and could not contend 

that Kyocera has done anything similar here.

C. The Factors Courts Consider When Evaluating a Request Under 

28 U.S.C. § 1782 Are Relevant and Weigh Against Modifying the 

Protective Order.

In addition to the factors discussed above, numerous courts have considered 

the factors that govern motions brought under 28 U.S.C. § 1782 when deciding 

motions to modify protective orders. See, e.g., In re Posco, 794 F.3d 1372, 1376 

(Fed. Cir. 2015); INVISTA, 2013 WL 1867345, at *3-4 (applying the so-called 

Intel factors without deciding whether or not they controlled the outcome); 

Infineon, 247 F.R.D. at 4 (“[C]onsideration of the reasoning that goes into a § 1782 

ruling is helpful in assessing [defendant’s] motion to modify the Protective 

Order.”). These factors, articulated in Intel Corp. v. Advanced Micro Devices, Inc., 

542 U.S. 241 (2004), are: “(a) whether the person from whom discovery is sought 

is a participant in the foreign proceeding; (b) the nature of the foreign tribunal, the 

character of the proceedings underway, and the receptivity of the tribunal to U.S. 

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federal judicial assistance; (c) whether the request is an attempt to circumvent 

foreign proof gather restrictions; and (d) the intrusiveness or burden imposed by 

the discovery.” Infineon, 247 F.R.D. at 4 (citing Intel, 542 U.S. at 264-65). The 

Intel factors counsel against modifying the protective order here.

First, that Kyocera is a party to the Japanese proceeding weighs against 

modification, as a foreign court’s need for U.S. judicial assistance in obtaining 

discovery is presumed to be minimal when it comes to obtaining information held 

by the parties to the foreign proceeding. See Infineon, 247 F.R.D. at 4; Advanced 

Micro Devices, Inc. v. Intel Corp., 2004 WL 2282320, at *2 (N.D. Cal. Oct. 4, 

2004). 

Second, there is no indication whatsoever that the Tokyo District Court is 

receptive to U.S. judicial assistance. While the Tokyo District Court has accepted

Hemlock’s offer to submit evidence in support of its position on whether the 

Tokyo District Court has jurisdiction, the Tokyo Court has never indicated that this 

evidence should come from confidential documents produced in the U.S. litigation. 

Hemlock’s argument to the contrary, (Mot. at 16), is completely unsupported

conjecture.

Third, Hemlock’s tactics strongly suggest that its request for modification is 

an attempt to circumvent Japanese discovery procedures. Hemlock has been aware 

of the jurisdictional issues in Japan since at least June 2015 and has submitted 

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multiple briefs to the Tokyo District Court on the topic. And Hemlock 

acknowledges that the Tokyo District Court has a procedure for ordering 

production of documents from the parties. (Tierney Decl. ¶ 15.) Nevertheless, 

Hemlock has made no effort to avail itself of these procedures despite having been 

aware of the jurisdictional issues for many months and despite having first 

approached Kyocera about changing the protective order back in November 2015. 

This Court should not relieve Hemlock of its failure to seek discovery in Japan by 

granting modification, especially considering that Hemlock waited until the last 

possible moment to ask this Court to relieve it of the consequences of its lack of 

diligence in Japan.

Fourth, Hemlock’s request to modify the protective order to allow it to use 

any document produced and designated as confidential in Japan is overly intrusive 

and burdensome. Without knowing which specific documents Hemlock may seek 

to use in Japan, Kyocera has no way to determine whether Hemlock has any 

genuine need to introduce these documents or whether there is any basis for 

submitting these documents under Japanese procedures, and forcing Kyocera to 

review its entire production for such a purpose would clearly be unreasonably 

burdensome. Hemlock’s vague, overbroad request stands in sharp contrast to cases 

in which courts have found that specific, narrowly tailored requests to use 

documents in a foreign proceeding are not overly intrusive or burdensome for the 

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producing party. See In re Hallmark Capital Corp., 534 F. Supp. 2d 951, 958 (D. 

Minn. 2007) (request for emails relating to a single subject over a several week 

period was not unduly burdensome); In re Application of Sumar, 123 F.R.D. 467, 

472-73 (S.D.N.Y. 1988) (“The Order and subpoena in the present case are 

sufficiently specific as they specify documents during a reasonable period of time 

and state with reasonable particularity the subjects to which the documents 

relate.”).

IV. CONCLUSION

For the reasons stated, Kyocera respectfully requests that the Court deny 

Hemlock’s Motion to Modify the Protective Order.

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Dated: April 22, 2016 By: /s/ Greg Stone

Gregory P. Stone

Daniel B. Levin

Erin J. Cox

Bryan H. Heckenlively

Emily Curran-Huberty

Munger, Tolles & Olson LLP

355 South Grand Avenue

Los Angeles, CA 90071

Tel: (213) 683-9528

gregory.stone@mto.com

daniel.levin@mto.com

erin.cox@mto.com

bryan.heckenlively@mto.com

emily.curran-huberty@mto.com

David C. Doyle

William V. O’Connor

Christian G. Andreu-von Euw

Morrison & Foerster LLP

12531 High Bluff Drive

San Diego, CA 92130-2040

Tel: (858) 720-5100

ddoyle@mofo.com

woconnor@mofo.com

christian@mofo.com

Robert A. Hahn (P28193)

Jungerheld, Hahn & Washburn, P.C.

P.O. Box 6128

Saginaw, MI 48608-6128

Tel: (989) 790-0000

r.hahn@ameritech.net

Keefe A. Brooks (P31680)

Brooks Wilkins Sharkey & Turco, PLLC

401 S. Old Woodward, Suite 400

Birmingham, MI 48009

Tel: (248) 971-1800

brooks@bwst-law.com

Attorneys for Defendant and 

Counterclaimant Kyocera Corporation

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CERTIFICATE OF SERVICE

I certify that on April 22, 2016, I caused a copy of the foregoing to be filed 

electronically and that the document is available for viewing and downloading 

from the ECF system. Participants in the case who are registered CM/ECF users 

will be served by the CM/ECF system.

By: /s/ Emily Curran-Huberty 

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