In the

United States Court of Appeals

For the Seventh Circuit ____________________

No. 17-1674

HERAEUS KULZER, GMBH,

Plaintiff-Appellant,

v.

BIOMET, INC., et al.,

Defendants-Appellees,

and

ESSCHEM, INC.

Intervenor-Appellee.

____________________

Appeal from the United States District Court for the

Northern District of Indiana, South Bend Division.

No. 3:09-cv-530 — Robert L. Miller, Jr., Judge.

____________________

ARGUED JANUARY 9, 2018 — DECIDED FEBRUARY 1, 2018

____________________

Before FLAUM, KANNE, and ROVNER, Circuit Judges.

FLAUM, Circuit Judge. 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 
2 No. 17-1674

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. 
No. 17-1674 3

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. 

I. Background

A. The Alleged Trade Secret Misappropriation

Heraeus is a German company that specializes in the development and production of bone cements used in joint replacement surgery. Heraeus began developing and producing 

bone cements in the 1950s. 

In the early 1970s, Heraeus contracted with Merck KGaA

(“Merck”), a German pharmaceutical company, to distribute 

its bone cements. To help Merck obtain regulatory approval 

for its bone cements, Heraeus gave Merck confidential information. Merck was contractually obligated to use that information solely for the purpose of obtaining regulatory approval and to protect the information from disclosure. 

In 1997, Merck entered into a joint venture with Biomet. In 

2004, Merck sold its joint venture shares to Biomet without 

telling Heraeus. When Heraeus found out, it stopped delivering its bone cements to Biomet. 

When the distribution relationship between Biomet and 

Heraeus ended in 2005, Biomet began manufacturing and 

selling bone cements that directly compete with Heraeus’s 

products. After dominating the bone cement market for fifty 

years, Heraeus began losing its market share. 
4 No. 17-1674

Heraeus sued Biomet in courts throughout Europe, alleging that Biomet developed its bone cements with Heraeus’s 

proprietary information. Heraeus also claims that Biomet 

used the allegedly misappropriated information to help Esschem, Inc. (“Esschem”)—a chemical company in Pennsylvania—create the copolymers that Biomet uses in its bone cements. 

B. The § 1782 Action

On December 30, 2008, Heraeus sued Biomet in Germany 

for trade secret misappropriation. Shortly thereafter, Heraeus 

commenced this proceeding in the Northern District of Indiana under 28 U.S.C. § 1782 to obtain discovery from Biomet.1

In relevant part, that statute provides that “[t]he district court 

of the district in which a person resides or is found may order 

him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal.” 28 U.S.C. § 1782(a). 

The Indiana district court initially denied the petition, but 

on appeal we reversed and remanded for the district court to 

oversee and manage the discovery process. See Heraeus Kulzer, 

GmbH v. Biomet, Inc., 633 F.3d 591, 599 (7th Cir. 2011) [hereinafter Heraeus I]. 

C. Stipulated Protective Orders

On remand, Biomet agreed to produce responsive discovery materials pursuant to an amended protective order, which

was agreed to by the parties and entered by the district court. 

 1 Heraeus also filed a § 1782 proceeding against Esschem in the district 

court for the Eastern District of Pennsylvania. In re Application of Heraeus 

Kulzer GmbH, 2:09-mc-17-CMR (E.D. Pa. filed Jan. 29, 2009).
No. 17-1674 5

In recognition of the “highly competitive” bone cement industry, and to protect Biomet’s trade secrets, that protective order 

allows Biomet to designate discovery materials as confidential. Once materials are designated as confidential, Heraeus 

may only use them in the German proceedings and in this 

§ 1782 action, and may only disclose them to authorized individuals specified in the protective order. The amended protective order states that it does not “prevent the Biomet Respondents from disclosing or using in any manner or for any 

purpose their own Confidential Information.”

In August 2011, the district court allowed Esschem to intervene to protect its interests because some of the discovery 

materials produced contained communications between Esschem and Biomet. After Esschem intervened, the parties 

agreed to, and the district court entered, a second amended 

protective order. That protective order allowed Heraeus to 

use certain documents in the German proceedings provided 

that the documents were treated as confidential by the German courts. 

The district court periodically entered additional protective orders to address particular concerns as they arose. Each 

successive protective order supplemented prior protective orders.2

D. The German Judgment

Meanwhile, Heraeus submitted the discovery it obtained 

in this § 1782 proceeding to the German court as evidence to 

 2 The court entered a third amended protective order in December 

2011; a fourth amended protective order in February 2012; a fifth amended 

protective order in August 2012; a sixth amended protective order in 

March 2013; and a seventh amended protective order in September 2014. 
6 No. 17-1674

support its trade secret misappropriation claims against Biomet. On June 5, 2014, the German court held that Biomet misappropriated Heraeus’s trade secrets and used them to guide 

Esschem in creating the copolymers that Biomet uses in its 

bone cements.3 In its ruling, the German court described and 

quoted nine documents, which the parties refer to as the 

“Cited Documents.” Those documents contain correspondence between Biomet and Esschem employees about laboratory tests performed on some of Heraeus’s bone cement products. The German court determined that portions of this correspondence contained Heraeus’s trade secrets. Accordingly, 

it enjoined Biomet from manufacturing, offering, or distributing any bone cement products developed using the misappropriated information. 

E. European Enforcement Proceedings

Heraeus claims that, despite the German court’s injunction, Biomet continues to sell bone cement products that were 

made using misappropriated information in other European 

countries. Accordingly, Heraeus filed proceedings in several 

European countries—France, the Netherlands, Austria, Italy, 

Belgium, Finland, Denmark, Norway, and the United Kingdom—to enforce the German judgment.4

 

3 The German Federal Supreme Court affirmed this judgment on June 

16, 2016. 

4 Heraeus also filed another lawsuit against Esschem in the Eastern 

District of Pennsylvania to stop the continued production of the copolymers used in Biomet’s bone cements, which it claims Esschem continues

to produce and ship to Biomet in Europe. The district court presiding over 

that case granted summary judgment to Esschem after finding that 
No. 17-1674 7

F. The District Court Excludes the German Judgment 

from the Protective Orders’ Restrictions

Because the German judgment described and quoted portions of discovery materials that were subject to the protective 

orders, Heraeus asked the district court to clarify whether the 

German judgment was itself subject to the protective orders. 

To the extent it was, Heraeus asked the district court to exclude the German judgment from the scope of the protective 

orders so it could use the judgment in the European enforcement proceedings. 

The district court granted Heraeus’s motion on September 

8, 2014. In doing so, it found “good cause for the continued 

protection of Heraeus’s trade secrets and recogniz[ed] 

Heraeus’s strong interest in enforcing the terms of the Judgment and protecting its trade secrets.” Accordingly, the district court excluded the German judgment from the restrictions imposed by the protective orders so Heraeus could 

submit the judgment to foreign tribunals “as needed to enforce its rights and protect its trade secrets from further use or 

misappropriation.” 

G. Heraeus’s First Motion to Modify the Protective Orders

Heraeus eventually determined that it would also need to 

submit the Cited Documents to some of the tribunals presiding over the European enforcement proceedings. However, 

the parties were operating under the seventh amended protective order, which expressly covered the Cited Documents 

 

Heraeus’s claims were time barred by the applicable statutes of limitations. See Heraeus Med. GmbH v. Esschem, Inc., No. 2:14-cv-5169, 2018 WL 

573113 (E.D. Pa. Jan. 26, 2018). 
8 No. 17-1674

and thus imposed restrictions on Heraeus’s ability to use the

documents.

On July 21, 2015, Heraeus moved to modify the protective 

orders to exclude the nine Cited Documents. Heraeus argued 

that case-by-case amendments to the protective orders were 

no longer “workable” because “Heraeus needs the flexibility 

to submit the Cited Documents as appropriate and to react 

quickly to the ever-changing enforcement situation.” Heraeus 

further argued that continued protection of the Cited Documents was not necessary because: (1) the district court already 

excluded the German judgment from the protective orders, 

and the judgment quotes the Cited Documents extensively; 

(2) the German court determined that the trade secrets and 

confidential information described in the Cited Documents 

belong to Heraeus; and (3) Heraeus will protect the information in the Cited Documents from public disclosure. In the 

proposed order attached to that motion, Heraeus also asked 

the court to restrict Biomet and Esschem’s use of those documents. 

On September 22, 2015, the district court denied Heraeus’s 

motion. In its order, the district court concluded that Heraeus 

had the burden of showing good cause for modification of the 

protective orders, and found that Heraeus had not met its burden. The district court applied the four-factor test that district 

courts in this Circuit regularly use when resolving motions to 

modify protective orders.

With respect to the first factor—the nature of the protective order—the district court noted that stipulated blanket 

protective orders like the one at issue here are “more difficult 

to modify or vacate.” However, the court also expressed concern that “the proceedings in this court shouldn’t limit 
No. 17-1674 9

Heraeus’s ability to avail itself of whatever the German judgment gives it.” And, because Biomet and Esschem represented that “they would be agreeable to less drastic alternatives for use of the nine documents,” the court concluded that 

“this factor favors at least a partial modification of the protective orders.” 

The district court held that the second factor—foreseeability—was “a neutral factor.” Biomet and Esschem argued that 

Heraeus should have anticipated the need to file enforcement 

actions in other jurisdictions when it agreed to the protective 

orders because Heraeus knew that Biomet sold its bone cement products outside Germany. On the other hand, Heraeus 

argued that Biomet had shifted its operations to avoid the 

German court’s jurisdiction. Ultimately, the district court was 

“unable to determine the import of this factor.”

The district court found that the third factor—the parties’ 

reliance on the protective order—weighed against modification. The district court noted that “[t]he parties have been cooperating in the discovery process for the past four years under the terms of the various amendments to the protective orders.” The district court also relied on the fact that “Heraeus 

was able to obtain a judgment in the German proceedings 

while the parties operated under the terms of the protective 

orders for the past four years.” 

Finally, the district court determined that the fourth factor—good cause—also weighed against modification. Although Heraeus claimed that it might need to submit the Cited 

Documents to initiate enforcement proceedings in the future, 

the court noted that Heraeus had already initiated enforcement proceedings in the Netherlands, France, and the United 

Kingdom without having to submit the Cited Documents. 
10 No. 17-1674

Moreover, the court pointed out that “Heraeus has cited no 

instance where the current protective orders have impeded its 

pursuit of any foreign action.” 

However, the court concluded that Heraeus had shown 

good cause to shorten some of the time periods in which the 

parties were required to respond under the existing protective 

orders. Accordingly, the district court gave the parties until 

October 9, 2015 “to submit an amendment to the Seventh 

Amended Protective Order permitting Heraeus to pursue enforcement actions outside Germany in a timely fashion without publically disclosing the confidential information contained in the cited documents.” The district court “strongly 

encourage[d] the parties to work together toward a compromise.” 

H. Eighth Amended Protective Order

Heraeus did not appeal the district court’s September 22, 

2015 order. Instead, it negotiated with Biomet and ultimately

agreed to an eighth amended protective order that outlines

how Heraeus may use the Cited Documents in the enforcement proceedings. Specifically, paragraph 5 of that protective 

order only allows Heraeus to submit the Cited Documents in

enforcement proceedings if several confidentiality safeguards 

are in place. For example, paragraph 5 requires that court files 

discussing the Cited Documents are sealed from public view 

and prevents Heraeus from discussing the Cited Documents 

unless the courtroom is sealed. 

In turn, paragraph 6 of that protective order outlines the 

procedure that Heraeus should follow “[i]n the event that 

Heraeus seeks to use the Cited Documents in an Enforcement 

Proceeding but cannot comply with one or more provisions 
No. 17-1674 11

in this Eighth Amended Protective order.” If the parties cannot reach an agreement, paragraph 6(d) permits them to request a telephone conference with the district court to resolve 

the dispute. The district court entered the eighth amended 

protective order on October 8, 2015. 

I. Heraeus’s Second Motion to Modify the Protective 

Orders

About a year later, on November 10, 2016, Heraeus filed 

its second motion to modify the protective orders. Again, 

Heraeus asked the court to exclude the Cited Documents from 

the protective orders and to restrict Biomet’s and Esschem’s 

use of the Cited Documents. Heraeus argued that these modifications were necessary because Biomet had opposed its efforts to implement the paragraph 5 confidentiality safeguards 

in Belgium, Norway, and Denmark. As a result, Heraeus 

claimed that Biomet had prevented Heraeus from submitting

the Cited Documents in those tribunals. Heraeus also raised 

many of the same arguments that it raised in its first motion 

to modify—namely, that the confidential information in the 

Cited Documents belonged to Heraeus and that Heraeus 

would take sufficient steps to protect the information from 

public disclosure. 

On January 18, 2017, the district court denied Heraeus’s 

motion. The court applied the same four-factor test as before 

and noted that “[m]uch of what Heraeus argues in its motion 

to modify are points that have been raised before.” In addition, the court stressed that, “without changed circumstances, 

there are no grounds to alter [its] determination last year that 

the reliance factors ‘weigh[] against modification.’” The court 

found that, contrary to Heraeus’s assertion, “the evidence before the court doesn’t show that Biomet used the terms of the 
12 No. 17-1674

eighth amended protective order to obstruct court proceedings [in Belgium, Denmark, and Norway].” The district court 

further stated that, “[i]n Austria, the parties successfully negotiated a resolution to confidentiality issues by employing 

the procedure outlined in paragraph six of the eighth 

amended protective order,” and “encourage[d] the parties to 

consider the paragraph six procedure as a resource to resolve 

confidentiality disputes related to the cited documents.” The 

district court also rejected Heraeus’s contention that the German judgment, which had since been affirmed by the German 

Supreme Court, warranted modification of the protective orders. The district court explained that, although the German 

court’s factual findings were binding in other jurisdictions, 

this “doesn’t get Heraeus across the finish line” because “issues of ownership, misappropriation, and violation of a trade 

secret are issues of law.” Again, Heraeus did not appeal the 

district court’s order. 

J. Heraeus’s Third Motion to Modify the Protective Orders

One month later, on February 17, 2017, Heraeus requested

a telephone conference with the district court pursuant to paragraph 6(d) of the eighth amended protective order. In the alternative, Heraeus renewed its second motion to modify the 

court’s protective orders. 

In that motion, Heraeus argued that the proceedings in 

Belgium and Norway had been delayed as a result of Biomet’s 

refusal to accept restrictions on its use of the Cited Documents. Heraeus attached correspondence between its counsel 

and Biomet’s counsel in which Heraeus said that “[t]he crux 

of the confidentiality disputes in both proceedings [in Bel-
No. 17-1674 13

gium and Norway] is Biomet’s reluctance to accept any restrictions on Biomet’s use and disclosure of the Cited Documents.” Heraeus also attached declarations from two of its attorneys involved in the litigation in Belgium and Norway, 

both of whom declared that the litigation was delayed because Biomet would not agree to restrictions upon its use and 

disclosure of the Cited Documents. In its response letter, Biomet said that “it has no objection to Heraeus’s use of the 

Cited Documents in the identified ‘Enforcement Proceedings,’” but refused to agree to restrictions on how it could use 

its own documents. 

On March 1, 2017, the district court denied Heraeus’s motion in its entirety. First, the court concluded that Heraeus was 

not entitled to a conference under paragraph 6(d) of the 

eighth amended protective order. The court explained that 

paragraph 6 “is triggered only when ‘Heraeus seeks to use the 

Cited Documents in an Enforcement Proceeding but cannot 

comply with one or more provisions in the Eighth Amended 

Protective Order.’” Because Heraeus did not seek “permission 

to use the documents itself,” but rather sought to “restrict Biomet’s use of the documents,” the court concluded that the 

eighth amended protective order did not apply.

The district court also denied Heraeus’s alternative request to modify the protective order to restrict Biomet’s use of 

the Cited Documents. Relying on the standard articulated in 

its prior rulings, the court concluded that “Heraeus has

shown neither good cause nor changed circumstances” to 

modify “an agreed order that addresses different topics and 

which has governed the parties’ handling of litigation in 

about ten nations for more than a year.” 
14 No. 17-1674

Lastly, the court noted that “it isn’t clear that an order enjoining use of the fruits of discovery by the party from whom 

the discovery is sought falls within the scope of 28 U.S.C. 

§ 1782.” The court questioned whether it had “any authority 

to limit respondent’s use of discovery material” in an action 

brought under § 1782. However, the court did not explicitly 

rule on this issue and acknowledged that the parties had not 

addressed it. It “assumed that, if presented with appropriate 

grounds, [it] would have authority to limit Biomet’s use of the 

documents it produced under § 1782.” 

K. Appeal 

On March 30, 2017, Heraeus filed a notice of appeal seeking review of the district court’s March 1, 2017 order denying 

its third motion to modify the protective orders. Heraeus also 

asks us to review “all other orders underlying that decision,” 

including the orders issued on September 22, 2015 and January 18, 2017.

II. Discussion

A. Jurisdiction

First, we address the scope of our review on appeal. The 

parties agree that the district court’s order from March 1, 2017 

is a final decision over which this Court has appellate jurisdiction. However, they disagree about whether we may also 

review the “underlying orders” that were issued on September 22, 2015 and January 18, 2017. 

Biomet and Esschem argue that those underlying orders 

were final and thus immediately appealable. Accordingly, 

they claim that Heraeus was required to appeal those decisions within thirty days after their issuance. Because Heraeus 
No. 17-1674 15

did not file a notice of appeal until March 30, 2017—approximately seventeen months after the first order and seventy 

days after the second order—Biomet and Esschem say we lack 

jurisdiction to review those decisions. 

On the other hand, Heraeus argues that these underlying 

orders were not final, and thus not immediately appealable, 

because they “did not fully and finally resolve the dispute 

over the use of and restrictions upon the Cited Documents, 

but instead ... contemplated further action by the parties and 

the court.” Nevertheless, Heraeus claims that we may review 

those underlying orders now as part of this appeal because 

they “are part of the final decision and were stepping stones 

in reaching the district court’s ultimate conclusion.” 

1. Appealability of Discovery Orders In § 1782 Actions

Generally speaking, we have jurisdiction to review “appeals from all final decisions of the district courts.” 28 U.S.C. 

§ 1291. Adecision is “final” when it “ends the litigation on the 

merits and leaves nothing for the court to do but execute the 

judgment.” Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368, 

373 (1981) (quoting Coopers & Lybrand v. Livesay, 437 U.S. 463, 

467 (1978)). A decision is not final, and thus not immediately 

appealable, if it is “tentative, informal or incomplete.” Cohen 

v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546 (1949) (“So long 

as the matter remains open, unfinished or inconclusive, there 

may be no intrusion by appeal.”). This final judgment rule ensures deference to trial court judges, prevents piecemeal appeals, and promotes efficient judicial administration. Firestone, 449 U.S. at 374. 

Because discovery orders do not end the litigation on the 

merits, they are usually not final and thus not immediately 
16 No. 17-1674

appealable. See Heraeus I, 633 F.3d at 593. However, in § 1782 

actions the litigation on the merits occurs in a foreign tribunal, 

so “the only matter is discovery.” Id. Because there is no underlying merits proceeding in the district court, “many of the 

concerns that make us reluctant to review discovery orders on 

an interlocutory basis disappear.” In re Naranjo, 768 F.3d 332, 

346–47 (4th Cir. 2014). Accordingly, we have exercised appellate jurisdiction over discovery orders in this context. See, e.g.,

Heraeus I, 633 F.3d at 593; Kestrel Coal Pty. Ltd. v. Joy Glob., Inc., 

362 F.3d 401, 403 (7th Cir. 2004). Our sister courts of appeals 

have done the same. See, e.g., Naranjo, 768 F.3d at 346–47; In re 

Premises Located at 840 140th Ave. NE, Bellevue, Wash., 634 F.3d 

557, 566–67 (9th Cir. 2011) (exercising appellate jurisdiction 

over district court’s order denying motion for a protective order in § 1782 proceeding); Bayer AG v. Betachem, Inc., 173 F.3d 

188, 190 & n.1 (3d Cir. 1999) (“Only the discovery dispute under 28 U.S.C. § 1782 is occurring in the United States. Therefore, because the underlying litigation is in [a foreign court], 

this discovery order is immediately appealable.”); In re Gianoli 

Aldunate, 3 F.3d 54, 57 (2d Cir. 1993).

2. The Underlying Orders Were Final and Immediately 

Appealable 

With that in mind, we turn to the issue presented here: 

whether the underlying orders in this § 1782 action were final 

and immediately appealable. We conclude that they were for 

several reasons. 

First, in its September 22, 2015 and January 18, 2017 orders, the district court conclusively denied Heraeus’s motions

to modify the protective orders. Indeed, the court stated mul-
No. 17-1674 17

tiple times throughout both of those orders that it was denying the relief Heraeus sought—namely, to exclude the nine 

Cited Documents from the restrictions of the protective orders. Having conclusively denied the relief sought, those orders cannot fairly be characterized as “tentative, informal or 

incomplete.” Cohen, 337 U.S. at 546. 

In arguing the contrary, Heraeus mischaracterizes those 

orders. For example, Heraeus says that in the September 22, 

2015 order, “the district court determined that ‘at least a partial modification of the protective orders’ was warranted.” 

However, the district court actually said that just one of the 

four factors weighed in favor of partial modification. After determining that two of the remaining factors weighed against 

modification, and one was neutral, the court ultimately concluded that, “[o]n balance, Heraeus hasn’t shown good cause 

to remove the nine named documents from the protective order.” Accordingly, the court “DENIE[D] Heraeus’s motion for 

modification of the protective orders.”

Heraeus also argues that the underlying orders were not 

final because they contemplated future negotiations and proceedings in the district court. Specifically, Heraeus points out 

that in the September 22, 2015 order the district court invited 

the parties to submit an amendment to the protective orders 

and “strongly encourage[d] the parties to work together towards a compromise.” And in the January 18, 2017 order the 

district court “encourage[d] the parties to consider the paragraph six procedure as a resource to resolve confidentiality 

disputes related to the cited documents.”5

 5 These statements confirm the district court’s denial of Heraeus’s motions to modify the protective orders. The court instructed the parties to 
18 No. 17-1674

However, the conclusion of all proceedings below is not a 

prerequisite to appealing a discovery order in a § 1782 action.

Indeed, we have exercised appellate jurisdiction over a district court’s order granting the plaintiff’s motion to enforce a 

subpoena for documents under § 1782. See Kestrel Coal, 362 

F.3d at 403. Such an order inherently contemplates future proceedings to manage the production of those documents. See 

id.6 Other courts of appeals have similarly exercised appellate 

jurisdiction over orders granting discovery in § 1782 actions. 

See, e.g., Naranjo, 768 F.3d at 347 (holding that the district 

 

amend the time periods in the existing protective orders, which were “designed” for German litigation, so Heraeus could “pursue enforcement actions outside Germany in a timely fashion.” This invited amendment implies what the district court already made explicit: the existing protective 

orders would continue to govern Heraeus’s use of the Cited Documents in 

the enforcement proceedings. The district court’s instruction to use the dispute resolution provided in paragraph six of the eighth amended protective order going forward similarly confirms that the protective orders 

would continue to apply to the Cited Documents.

6 Therefore, Heraeus’s reliance on Kestrel Coal is not persuasive. It is 

true that in Kestrel Coal we said “[o]rders [issued under § 1782] ... are final 

and appealable because they dispose of all issues in the proceeding.” 362 

F.3d at 403. But we held that the district court’s order was final and immediately appealable despite the obvious potential of future proceedings. 

Heraeus’s reliance on our language in Heraeus I is also misplaced. In 

that case, we said that the orders were final “because there [was] no pending litigation in the district court.” Heraeus I, 633 F.3d at 593. We continued: “The court is finished with the matter—as the only matter is discovery—and when no further proceedings are contemplated, the court’s last 

order, even if it is a discovery order, is an appealable final order.” Id. However, in Heraeus I it was clear that the district court did not contemplate 

further proceedings because it had denied Heraeus’s § 1782 petition. Thus, 

we were not confronted with the issue presented here—i.e., whether an 

order is appealable in this context if proceedings are ongoing. 
No. 17-1674 19

court’s order granting a motion to compel discovery under 

§ 1782 was final and immediately appealable); Chevron Corp. 

v. Berlinger, 629 F.3d 297, 306 (2d Cir. 2011) (same). In short, 

the procedural posture of these decisions strongly suggests 

that discovery rulings in § 1782 actions are final and immediately appealable even if proceedings are ongoing.

In addition, Heraeus’s proposed definition of finality in 

this context would be difficult, if not impossible, to apply in 

practice. After all, it will not always be clear when the proceedings below have concluded in a § 1782 action. As Biomet 

and Esschem point out, it is not even clear in this case that the 

court’s last order from March 1, 2017—which the parties agree 

is appealable—will put an end to the proceedings below, 

which have been ongoing for almost a decade. In effect, if we 

adopted Heraeus’s approach, a district court order in a § 1782 

proceeding would almost never be final and appealable.

The Tenth Circuit’s reasoning in In re Republic of Ecuador, 

735 F.3d 1179 (10th Cir. 2013), further suggests that discovery 

orders can be final and immediately appealable in a § 1782 action even if proceedings are ongoing. In that case, an intervenor appealed the district court’s order granting a motion to 

compel discovery in a § 1782 action. Id. at 1182. While the appeal was pending, plaintiffs filed a second motion to compel 

discovery in the district court alleging that the defendant continued to withhold relevant documents. Id. The magistrate 

judge issued two more orders clarifying the scope of the initial order and compelling further production, but the district 

court never adopted those orders. Id. On appeal, the plaintiffs 

argued that the initial order was not a final decision for purposes of appellate jurisdiction because “further proceedings 

[are] still underway in the district court.” Id. at 1183 (alteration 
20 No. 17-1674

in original). However, the Tenth Circuit rejected this argument, holding that “a district court’s § 1782 order can[] be ‘final’[even] if subject to ongoing dispute about its coverage and 

scope before a magistrate judge.” Id.

Heraeus’s theory of finality would also undermine the 

purposes of the final judgment rule. The Supreme Court has 

said that “finality is to be given a practical rather than a technical construction.” Microsoft Corp. v. Baker, 137 S. Ct. 1702, 

1712 (2017) (quoting Eisen v. Carlisle & Jacquelin, 417 U.S. 156, 

171 (1962)); see also Brown Shoe Co. v. United States, 370 U.S. 294, 

306 (1962) (endorsing a “pragmatic approach to the question 

of finality”). Specifically, the Court has instructed us to construe the finality requirement “in line with the[] reasons for 

the rule”—namely, to “preserve[] the proper balance between 

trial and appellate courts, minimize[] the harassment and delay that would result from repeated interlocutory appeals, 

and promote[] the efficient administration of justice.” Baker, 

137 S. Ct. at 1712. On balance, those objectives support Biomet’s position that the underlying discovery orders were final and immediately appealable. Of course, litigants should 

attempt to resolve discovery disputes through the district 

judge in the first instance. However, as explained supra, the

district court conclusively denied the relief Heraeus sought in 

both its September 22, 2015 and January 18, 2017 orders. Instead of appealing those orders to this Court, Heraeus filed 

multiple repetitive motions in the district court. In doing so, 

Heraeus wasted valuable judicial resources and further delayed the efficient resolution of this case. 

In sum, a discovery order issued in a § 1782 proceeding 

may be final and immediately appealable even if proceedings 

are ongoing. Here, the underlying orders were immediately 
No. 17-1674 21

appealable because the district court conclusively denied the 

relief sought. Accordingly, Heraeus was required to file a notice of appeal within thirty days after those orders were issued. See Fed. R. App. P. 4(a)(1). Because Heraeus failed to do 

so, we lack jurisdiction to review those orders. See Sherman v. 

Quinn, 668 F.3d 421, 424 (7th Cir. 2012) (“A timely notice of 

appeal is a prerequisite to appellate review.” (quoting 

McCarty v. Astrue, 528 F.3d 541, 544 (7th Cir. 2008))).

3. The Underlying Orders Do Not “Merge” With the Final 

Order On Appeal 

Next, Heraeus argues that we may still review the underlying orders as part of this appeal because they were “stepping stones in reaching the district court’s ultimate conclusion.” Put differently, Heraeus claims that “[t]he Final Order 

is cumulative, and the interlocutory Underlying Orders 

merge with it on appellate review.”

Heraeus is correct that, in the typical case where a party 

appeals the final judgment, we may review “all decisions that 

shaped the contours of that judgment,” including earlier interlocutory orders. Kamen v. Kemper Fin. Servs., Inc., 908 F.2d 

1338, 1341 (7th Cir. 1990), rev’d on other grounds, 500 U.S. 90, 

111 (1991). However, those principles do not apply to the 

atypical situation presented here. 

To understand why, it is helpful to analogize to the collateral order doctrine. Under that narrow exception to the final 

judgment rule, we have jurisdiction to immediately review interlocutory orders that conclusively resolve an important issue that is “conceptually separate from the merits” and “effectively unreviewable on an appeal from a final judgment.” 

Herx v. Diocese of Fort Wayne-South Bend, Inc., 772 F.3d 1085, 
22 No. 17-1674

1088–89 (7th Cir. 2014). Critically, the Supreme Court has said 

that collateral orders do not “merge[] in [the] final judgment” 

because they “[do] not make any step toward final disposition 

of the merits of the case.” Cohen, 337 U.S. at 546. Indeed, if we 

waited until final judgment to review such orders, it would 

be “too late” and the appellant’s “rights ... will have been lost, 

probably irreparably.” Id.

The same reasoning applies to discovery orders in § 1782 

actions. As explained supra, § 1782 actions are unique because 

there is no litigation on the merits. Rather, § 1782 is just a 

mechanism to obtain discovery. As a result, any orders issued 

in this context will necessarily be separate from the merits of 

the underlying litigation. For that reason, we have effectively 

carved out an exception to the final judgment rule in this context to allow for appellate review. Like reviewable collateral 

orders, discovery orders in § 1782 actions do not take steps to 

resolve the litigation on the merits. Thus, the underlying orders are immediately appealable and do not merge with the 

final judgment on appeal. 

4. The March 1, 2017 Order Does Not Encompass Both Issues Raised in This Appeal 

Finally, Heraeus argues that “it effectively does not matter 

whether the Court reviews only the Final Order or also the 

Underlying Orders, because the Final Order encompasses 

and finally resolves all of the issues on appeal.” Heraeus is 

wrong. 

In this appeal, Heraeus argues that the district court erred

in two ways: (1) by refusing to exclude the Cited Documents 

from the scope of the protective order; and (2) by refusing to 

impose restrictions on Biomet and Esschem’s use of the Cited 
No. 17-1674 23

Documents. In its first and second motions to modify the protective order, Heraeus asked the court for both forms of relief. 

But Heraeus did not ask for the same relief in its third motion. Heraeus fashioned that motion as a “notice of changed 

circumstances and renewed motion.” Heraeus argues that, by 

expressly renewing its second motion, it renewed its request 

to exclude the Cited Documents from the restrictions in the 

protective orders. However, with the exception of this single 

statement about renewing its second motion, nothing in the 

third motion asks the district court to remove the Cited Documents from the scope of the protective order. 

Instead, the third motion focused on Biomet’s refusal to 

accept restrictions on its use of the Cited Documents. Indeed, 

in the correspondence between Heraeus’s counsel and Biomet’s counsel that was attached to the third motion, Heraeus 

stated that “[t]he crux of the confidentiality disputes in both 

proceedings [in Belgium and Norway] is Biomet’s reluctance 

to accept any restrictions on Biomet’s use and disclosure of the 

Cited Documents.”

Moreover, at the hearing on the third motion, Heraeus’s 

counsel said: 

All we’re hoping the Court can do is ... either 

mediate some kind of solution here or enter a 

limited order that prevents the further disclosure publically of the cited documents ... once 

they are produced to the Belgium and Norwegian courts and restricts Biomet from further 

disseminating those documents within Biomet 

on a going-forward basis for purposes other 
24 No. 17-1674

than this litigation, and that’s all we’re really 

asking for. 

Based on this representation, the district judge said: “[I]t 

seems ... we’re on a different part of the playing field than 

we’ve been before.” The court explained: “[W]hat we’ve been 

dealing with before with respect to several countries is what 

use Heraeus can make of these documents because Heraeus 

said it needed to put these documents in front of courts in order to protect their rights and needed the authority to do 

that.” The court continued: “[W]e’re at a different place, because now it appears to me that Heraeus is asking that Biomet’s use of the documents be restricted when they weren’t 

before and apparently didn’t have to be before in order to get 

us through the first wave of countries.” The district judge proceeded to ask Heraeus’s counsel: “Where am I going wrong 

here?” Heraeus’s counsel responded that the district judge 

was “not too far off base,” but clarified that it had also asked 

to impose restrictions on Biomet’s use in its previous two motions. If Heraeus was still seeking to exclude the Cited Documents from the scope of the protective orders as it had in previous motions, Heraeus’s counsel could have corrected the 

district court’s misconception at this point in time. Instead, 

Heraeus’s counsel confirmed that it was just seeking to restrict 

Biomet’s use of the Cited Documents. 

In sum, Heraeus did not ask the district court to exclude 

the Cited Documents from the scope of the protective orders 

in its third motion, and it confirmed at the hearing on that 

motion that it was simply seeking to restrict Biomet’s use of 

the Cited Documents. As a result, the district court’s final order of March 1, 2017 does not address whether to exclude the 
No. 17-1674 25

Cited Documents from the scope of the protective orders. Rather, it only addresses whether the eighth amended protective 

order should be amended to impose restrictions on Biomet’s 

use of the Cited Documents. We therefore limit our review to 

that issue.

B. The District Court Did Not Abuse Its Discretion

“The trial court is in the best position to weigh fairly the 

competing needs and interests of parties affected by discovery.” Cty. Materials Corp. v. Allan Block Corp., 502 F.3d 730, 739 

(7th Cir. 2007) (quoting Seattle Times Co. v. Rhinehart, 467 U.S. 

20, 36 (1984)). Moreover, “[t]he unique character of the discovery process requires that the trial court have substantial latitude to fashion protective orders.” Id. (quoting Rhinehart, 467 

U.S. at 36). Thus, we review a district court’s discovery decisions for abuse of discretion. Prestwick Capital Mgmt., Ltd. v. 

Peregrine Fin. Grp., Inc., 727 F.3d 646, 664 (7th Cir. 2013) (noting 

that our review is “extremely deferential”). In this context, a 

district court abuses its discretion if: “(1) the record contains 

no evidence upon which the court could have rationally based 

its decision; (2) the decision is based on an erroneous conclusion of law; (3) the decision is based on clearly erroneous factual findings; or (4) the decision clearly appears arbitrary.” Id.

(quoting Sherrod v. Lingle, 223 F.3d 605, 610 (7th Cir. 2000)).

Heraeus argues that the district court abused its discretion 

by: (1) applying the wrong legal test; (2) placing the burden 

on Heraeus to show good cause to modify the protective orders; and (3) concluding that modification was not warranted 

under the four-factor test. We address each of these arguments in turn. 
26 No. 17-1674

1. The District Court Applied the Correct Legal Test

The district court applied the four-factor test that courts in 

this Circuit regularly use when resolving motions to modify 

protective orders. See, e.g., Romary Assocs., Inc. v. Kibbi, LLC, 

No. 1:10-cv-376, 2012 WL 32969, at *1 (N.D. Ind. Jan. 6, 2012); 

Chi. Mercantile Exch., Inc. v. Tech. Research Grp., LLC, 276 F.R.D. 

237, 239 (N.D. Ill. 2011); Braun Corp. v. Vantage Mobility Int’l, 

LLC, 265 F.R.D. 330, 332 (N.D. Ind. 2009); Murata Mfg. Co. v. 

Bel Fuse, Inc., 234 F.R.D. 175, 179 (N.D. Ill. 2006). Under that 

test, courts consider the following four factors: “(1) the nature 

of the protective order; (2) the foreseeability, at the time of issuance of the order, of the modification requested; (3) the parties’ reliance on the order; and most significantly (4) whether 

good cause exists for the modification.” Chi. Mercantile Exch., 

276 F.R.D. at 239 (quoting Trading Techs. Int’l, Inc. v. GL Consultants, Inc., Nos. 05-cv-4120, 05-cv-5164, 2011 WL 148252, at 

*3 (N.D. Ill. Jan. 18, 2011)).

Heraeus argues that this test does not apply where a party 

seeks to modify the restrictions on a discrete group of documents. Although Heraeus does not directly identify an alternative legal test, it claims that the district court should have 

followed our decision in Jepson, Inc. v. Makita Electric Works, 

Ltd., 30 F.3d 854 (7th Cir. 1994). In that case, the district court 

denied a motion to modify a stipulated protective order that 

prevented one of the parties from using a deposition in another proceeding before the International Trade Commission

(“ITC”). See id. at 855–58. On appeal, we concluded that the 

non-party deponent “ha[d] tried to use the stipulated protective order and the [interim protective order] as shields to prevent highly relevant and nonconfidential information from 
No. 17-1674 27

reaching the ITC,” and we “refuse[d] to assist [it] with its effort.” Id. at 860. We ultimately held that the district court 

should have granted the motion to modify the protective order to allow use of the deposition testimony in the ITC proceeding because this would prevent duplicative discovery 

and would not prejudice the non-movant’s substantial rights. 

See id. at 861. 

Jepson is distinguishable because Biomet is not using the 

protective orders as a shield to prevent the Cited Documents 

from being used in other tribunals. Although Heraeus 

claimed that Biomet was using the protective orders to obstruct proceedings in Belgium and Norway, the district court 

rejected that argument in its January 18, 2017 order. Specifically, the court found that “the evidence before [it] doesn’t 

show that Biomet used the terms of the eighth amended protective order to obstruct court proceedings there.” 

The district court’s finding was not clearly erroneous. 

Heraeus admits that it has been able to use the Cited Documents in several countries: Austria, Denmark, Finland, 

France, and Italy. Moreover, Biomet repeatedly stated—in its 

correspondence with Heraeus and at the hearing on these motions—that it did not have any objection to Heraeus’s use of 

the Cited Documents in the European enforcement proceedings, but rather objected to restrictions on its own use of the 

Cited Documents. And, as the district court pointed out, 

“Heraeus conceded ... that the confidentiality disputes might 

have been the result of confusion, rather than an effort by Biomet to obstruct.” Therefore, Jepson does not apply. 
28 No. 17-1674

2. The District Court Properly Placed the Burden on 

Heraeus to Show Good Cause to Modify the Protective 

Order

The district court correctly concluded that Heraeus, as the 

party seeking modification, has the burden of showing good 

cause to modify the protective order. See, e.g., Braun, 265 

F.R.D. at 332 (“The party seeking to modify the protective order has the burden of demonstrating that good cause exists.”); 

Murata Mfg. Co., 234 F.R.D. at 179 (same); Romary, 2012 WL 

32969 at *1 (same). 

Nevertheless, Heraeus argues that, “[a]s the parties seeking protection for the Cited Documents, Biomet and Esschem 

bear the burden of showing, on a document-by-document basis, that the protection they seek is warranted.” In support of 

this argument, Heraeus relies on cases that resolved motions 

to seal or unseal court documents. See, e.g., Baxter Int’l, Inc. v. 

Abbott Labs., 297 F.3d 544, 548 (7th Cir. 2002) (denying joint 

motion to maintain documents under seal); United States v. 

Pickard, 733 F.3d 1297, 1305 (10th Cir. 2013) (reversing district 

court’s decision denying motion to unseal court records); In 

re Bank One Sec. Litig., 222 F.R.D. 582, 584 (N.D. Ill. 2004) 

(granting lead plaintiff’s motion to unseal the district court 

record). Because there is a “strong presumption toward public disclosure of court files and documents,” courts resolving 

such motions have placed the burden on the party seeking

confidentiality to show good cause for keeping the documents from public view. In re Bank One, 222 F.R.D. at 585–86; 

see also Baxter, 297 F.3d at 548 (noting “[t]he strong presumption of public disclosure” for “materials that formed the basis 

of the parties’ dispute and the district court’s resolution”); 

Pickard, 733 F.3d at 1302 (“The party seeking to overcome the 
No. 17-1674 29

presumption of public access to the documents bears the burden of showing some significant interest that outweighs the 

presumption.” (quoting Helm v. Kansas, 656 F.3d 1277, 1292 

(10th Cir. 2011))). 

Here, Heraeus is not asking to unseal the Cited Documents so the public can view them. To the contrary, Heraeus 

stressed throughout this litigation that it wants to prevent public disclosure of the Cited Documents. Thus, the presumption 

in favor of public access to court documents is not implicated. 

Absent this presumption, the district court properly placed 

the burden on Heraeus to show good cause to modify the stipulated protective order. 

3. The District Court Did Not Abuse Its Discretion In Applying The Four-Factor Test

Lastly, the district court did not abuse its discretion by 

concluding that Heraeus had not met its burden under the 

four-factor test to warrant modification of the eighth 

amended protective order. 

With respect to the first factor—the nature of the protective order—the district court explained that Heraeus’s burden 

was even higher because Heraeus agreed to the protective orders at issue. See Am. Tel. & Tel. Co. v. Grady, 594 F.2d 594, 597 

(7th Cir. 1978) (“[W]here a protective order is agreed to by the 

parties before its presentation to the court, there is a higher 

burden on the movant to justify the modification of the order.”). Heraeus points out that paragraph 11 of the eighth 

amended protective order expressly contemplates modification because it reserves Heraeus’s right to challenge Biomet’s 

designation of any document as confidential and to seek relief 
30 No. 17-1674

from the court. However, as the district court noted in its January 18, 2017 order, most protective orders provide for the 

possibility of amendment. Moreover, because the eighth 

amended protective order outlines a detailed dispute-resolution process that the parties must follow before they ask the 

court for relief, it actually restricts Heraeus’s right to seek 

amendment. Thus, this factor weighs against modification. 

The district court also considered whether Heraeus had

shown good cause for modification. The district court concluded that Heraeus had not, stating: 

The only changed circumstance is that someone representing Heraeus (which has many lawyers in light of 

the number of jurisdictions in which it is trying to protect what it believes are its trade secrets) has decided 

that Biomet should be restricted in its use of the documents Heraeus wants to use and already has discovered. The only good cause is that the suspicions that 

motivate those lawyers might be correct. 

The district court’s conclusion was not an abuse of discretion. Indeed, Heraeus’s third and final motion simply repeated arguments that the district court had already addressed (and rejected) in the underlying orders. In particular, 

Heraeus reiterated its claim that it owns the trade secrets contained in the Cited Documents. However, the district court 

had already rejected this argument in the ruling it issued just 

six weeks prior. In that order, the district court explained that 

the German court’s conclusion on ownership was not binding 

because “issues of ownership, misappropriation, and violation of a trade secret are issues of law.” Moreover, although 

Heraeus claimed that Biomet’s refusal to accept restrictions on 

its use of the Cited Documents caused delays in Belgium and 
No. 17-1674 31

Norway, enforcement proceedings had proceeded apace in 

several other countries despite a lack of such restrictions. Accordingly, Heraeus’s failure to show good cause or changed 

circumstances also weighs against modification. 

Finally, the district court considered the parties’ 

longstanding reliance on the eighth amended protective order. Specifically, the court noted that it “has governed the parties’ handling of litigation in about ten nations for more than 

a year.” Therefore, this factor also weighs against modification. 

In sum, the district court did not abuse its discretion by 

denying Heraeus’s request to modify the eighth amended 

protective order to impose restrictions on Biomet’s use of the 

Cited Documents.7

III. Conclusion

For the foregoing reasons, we AFFIRM the judgment of the 

district court.

 

7 The district court questioned whether it had authority under § 1782 

to restrict Biomet’s use of its own documents. The district court noted that, 

while § 1782 gave it authority to “place limitations on the movant’s use of 

the discovery material ... any authority to limit respondent’s use of discovery material is less apparent on the face of the statute.” However, the 

district court said that, “[i]n denying Heraeus’s motion to modify the protective order, the court has assumed that, if presented with appropriate 

grounds, the court would have authority to limit Biomet’s use of the documents it produced under § 1782.” Because the district court ultimately 

resolved the motion on a different ground and did not abuse its discretion 

in doing so, we do not need to decide this issue.