Affirmed and Opinion filed July 13, 1

In The

(Hourt of Appeals

JTiftlf Itstrtrt of ®exas at lallas

No. 05-93-01925-CV

THE UPJOHN COMPANY, Appellant

V.

WILLIAM R. FREEMAN, MARTHA FREEMAN, Individually and as next friend and

guardian of SEAN PERRY FREEMAN, a Minor Child, SUZANNE E. FREEMAN, as

next friend and guardian of LEAH SUZANNE FREEMAN and WILLIAM LANCE

FREEMAN, Minor Children, LORI YVONNE FREEMAN, PUBLIC CITIZEN, and

THE DALLAS MORNING NEWS, Appellees

On Appeal from the 14th Judicial District Court

Dallas County, Texas

Trial Court Cause No. 89-09648-A

OPINION

Before Chief Justice Thomas1, and Justices Maloney and James2

Opinion By Justice James

This is an appeal from the trial court's order denying in part and granting in part

Upjohn's motion to seal certain documents pursuant to rule 76a of the Texas Rules of Civil

The Honorable Linda Thomas succeeded Chief Justice Charles McGarry, a member of the original panel at the time this

cause was submitted for decision. Chief Justice Thomas has reviewed the record and the briefs in this case.

The Honorable Tom James succeeded Justice Joe Burnett, a member of the original panel at the time this cause was

submitted for decision. Justice James has reviewed the record and the briefs in this case.
Procedure.3 In two points of error, Upjohn complains the trial court abused its discretion

in partially denying the sealing order. Appellees, the Freemans, complain in two crosspoints of error that the trial court erred in partially granting the sealing order. The Dallas

Morning News and Public Citizen (collectively intervenors) do not appeal the trial court's

decision to seal certain documents; they contend the trial court correctly refused to seal the

remaining documents. We affirm the trial court's sealing order.

FACTUAL AND PROCEDURAL HISTORY

William R. Freeman and his family (collectively the Freemans) sued Upjohn for

negligence and products liability forinjuries resulting from his use of Halcion, a commonly

prescribed sleeping pill. See Upjohn Co. v. Freeman, 885 S.W.2d 538 (Tex. App.-Dallas

1994, writ denied) (hereinafter the underlying litigation). The Freemans requested

discovery of Upjohn's documents about Halcion. Upjohn asked the court to limit the

disclosure of the documents under rule 76a. Upjohn posted the public notices required by

rule 76a(3). The Dallas Morning News, Inc. and Public Citizen intervened. The Freemans

and intervenors contested Upjohn's attempt to have the documents sealed.

On March 30, 1992, the trial court held a hearing as required by rule 76a(4). The

trial court denied Upjohn's motion to seal the documents. Upjohn appealed. This Court

reversed the trial court's order and remanded for a new rule 76a hearing, holding that the

trial court applied the incorrect burden of proof to Upjohn's motion. See Upjohn Co. v.

3All future references torules are tothe Texas Rules ofCivil Procedure unless otherwise stated.
Freeman, 847 S.W.2d 589, 592 (Tex. App.-Dallas 1992, no writ) (hereinafter Upjohn I).

On July 9, 1993, the trial court conducted asecond rule 76a hearing. The trial court

took judicial notice of all the papers, pleadings, and testimony in the underlying litigation

as well as the previous rule 76a hearing. The trial court granted in part and denied in part

Upjohn's request for asealing order. The trial court sealed the portion of the discovery

documents containing Upjohn's protocols in testing and analyzing Halcion, based upon the

court's finding that the protocols contained trade secrets. The trial court did not seal the

remaining documents. Upjohn appealed pursuant to rule 76a(8).

APPLICABLE LAW

Standard of Review

We review the trial court's ruling on the rule 76a motion under the abuse of

discretion standard. Upjohn I, 847 S.W.2d at 590. The test for an abuse of discretion is not

whether the facts present a proper case for the trial court's action. Rather, the test is

whether the trial court acted without reference to any guiding rules or principles, or acted

inanarbitrary or unreasonable manner. Downer v. Aquamarine Operators, Inc., 701 S.W.2d

238, 241-42 (Tex. 1985), cert, denied, A16 U.S. 1159 (1986); Upjohn I, 847 S.W.2d at 590.

Rule 76a provides the guiding rules and principles for sealing court records. Upjohn I, 847

S.W.2d at 590; Dunshie v. General Motors Corp., 822 S.W.2d 345, 347 (Tex.

App.-Beaumont 1992, no writ). An abuse of discretion does not exist when the trial court

bases its decision on conflicting evidence. Davis v. Huey, 571 S.W.2d 859, 862 (Tex. 1978);

Zmotony v. PhUlips, 529 S.W.2d 760,762 (Tex. 1975); Recon Exploration,Inc. v. Hodges, 798
S.W.2d 848, 851 (Tex. App.-Dallas 1990, no writ).

When we review matters committed to the trial court's discretion, we may not

substitute ourjudgment for that of the trial court. See Flares v. Fourth Court ofAppeals, 111

S.W.2d 38, 41-42 (Tex. 1989) (orig. proceeding); Upjohn I, 847 S.W.2d at 590. Even if we

would decide the issue differently, we may not disturb the trial court's decision unless it is

arbitrary and unreasonable. Johnson v. Fourth Court ofAppeals, 700 S.W.2d 916, 918 (Tex.

1985) (orig. proceeding); Upjohn I, 847 S.W.2d at 590. In anonjury trial or hearing, the

trial judge is the sole judge of the witnesses' credibility and the weight given their testimony.

Tate v. Commodore County Mut. Ins. Co., 767 S.W.2d 219, 224 (Tex. App.-Dallas 1989,

writ denied).

Rule 76a

Rule 76a(l) provides that "court records... are presumed to be open to the general

public." Tex. R. Crv. P. 76a(l). "Court records" include "discovery, not filed of record,

concerning matters that have a probable adverse effect upon the general public health or

safety . . . except discovery in cases originally initiated to preserve bona fide trade secrets

or other intangible property rights." Tex. R. Crv. P. 76a(2)(c).

The trial court may not presume a document or particular group of documents are

court records if a party in a rule 76a motion contests whether the discovery in question

constitutes court records as defined in the rule. Eli Lilly &Co. v. Biffle, 868 S.W.2d 806,

808 (Tex. App.-Dallas 1993, no writ); Upjohn I, 847 S.W.2d at 591. When the issue is

raised, the trial court must determine whether a specific document orcategory ofdocuments
are court records. If the character of the discovery documents is disputed, it is the burden

of the party claiming the documents are open to the public to prove by apreponderance of

the evidence that the documents are court records as defined by rule 76a. Biffle, 868

S.W.2d at 808.

If the trial court finds that the documents are court records, the documents are

presumed to be open to the general public. The party moving for the sealing order then has

the burden to rebut the presumption in order to seal the records. Tex. R. Crv. P. 76a(l);

Biffle, 868 S.W.2d at 809. Aparty may rebut the presumption of openness by proving the

following:

(a) a specific, serious and substantial interest which clearly

outweighs:

(1) this presumption of openness;

(2) any probable adverse effect that sealing will have

upon the general public health or safety;

(b) no less restrictive means than sealing records will

adequately and effectively protect the specific interest asserted.

Tex. R. Crv. P. 76a(l)(a)(b). The party seeking to seal the court records must prove the

elements of rule 76a by a preponderance of the evidence. Upjohn /, 847 S.W.2d at 591.

A properly proven trade secret interest may constitute a specific, serious, and

substantial interest, which would justify restricting access to the documents in question. See

EH Lilly &Co. v. Marshall, 829 S.W.2d 157, 158 (Tex. 1992). A trade secret may consist

of any formula, pattern, device, or compilation of information which is used in one's
business and which gives one an opportunity to obtain an advantage over competitors who

do not know or use it. Hyde Corp. v. Huffines, 314 S.W.2d 763, 776 (Tex.), cert, denied, 358

U.S. 898 (1958); Rugen v. Interactive Business Sys., Inc., 864 S.W.2d 548, 552 (Tex.

App.-Dallas 1993, no writ).

The court may conduct an in camera inspection of the records. Tex. R. Crv. P.

76a(4). The court may base its decision on the pleadings, any stipulations of the parties,

affidavits and attachments filed by the parties, discovery requests, and oral testimony. Tex.

R. Crv. P. 76a(4);see Tex. R. Civ. P. 120a.

Amotion relating to sealing or unsealing court records shall be decided by written

order, open to the public, which shall state the specific reasons for finding and concluding

whether the showing required by rule 76a(l) has been made and the specific portions of

court records which are to be sealed. See Tex. R. Crv. P. 76a(6).

DISCUSSION

The discovery in question consists ofa large number ofhighly technical documents

not filed in the trial court's record.4 Upjohn offered to tender the documents for the trial

court's inspection. It appears from the record that the trial court did not inspect all of the

documents. Likewise, not all of the documents have been presented to this Court for

review. However, an in camera inspection ofthe documents is not required. Rule 76a

provides that the trial court may inspect records in camera ormay base its decision on the

A small portion of thedocuments was entered into evidence during theunderlying litigation.
pleadings, any stipulations of the parties, affidavits and attachments filed by the parties,

discovery requests, and oral testimony. See Tex. R. Civ. P. 76a(4); see also Dunshie, 822

S.W.2d at 347. We have all the records and evidence that the trial court reviewed.

Therefore, we review the trial court's findings based upon the entire record which includes

the affidavits of experts and the papers, pleadings, and testimony from the underlying

litigation.

Court Records

In point of error one, Upjohn contends that due to an erroneous interpretation of

the law, the trial court improperly concluded that the unfiled discovery documents were

court records. Specifically, Upjohn makes two arguments: (1) the trial court failed to apply

the appropriate legal standard in determining whether the unfiled discovery documents were

court records; and (2) the Freemans and intervenors offered no evidence or insufficient

evidence that the documents were court records.

Legal Standard

Upjohn contends that it was the Freemans' and intervenors' burden to prove that

specific documents have a probable adverse effect upon the general public health orsafety,

and the trial courtrequired Freeman and intervenors to make only a "general showing that

the lawsuit might affect public health or safety."

After the July 9, 1993 rule 76a hearing, the trial court issued its orderstating:

The Court finds by a preponderance of the evidence that the

documents in question (the "Discovery Documents")are "court

records" as defined in Rule 76a(2)(c) of the Texas Rules of
Civil Procedure. Specifically, the Discovery Documents are

discovery, not filed of record, that concern matters that have a

probable adverse effect upon the general public health and

safety. Additionally, the Court finds that some ofthe Discovery

Documents are "court records" as defined in Rule 76a(2)(c) in

that they were admitted inevidence during the trial ofthis case.

The trial court may not presume documents are court records ifa party in a rule 76a

motion raises the issue of whether the discovery in question constitutes court records as

defined in the rule. When the issue is raised, the trial court must determine whether a

specific document or category of documents constitutes court records. Biffle, 868 S.W.2d

at 808. The trial court, after considering evidence, entered awritten order finding that the

discovery documents in question were court records as defined in rule 76a. The court

tracked the language from rule 76a as the guiding rule in finding that the discovery

documents were court records. The order expressly limits itself to the documents in

question. The record refutes Upjohn's assertion that the trial court required the Freemans

and intervenors to make only a "general showing that the lawsuit might affect public health

or safety" or that the trial court adopted an incorrect standard to determine whether the

documents were court records.

Factual Findings

Upjohn's Contentions

Upjohn further contends the Freemans and intervenors offered no evidence or

insufficient evidence that the documents were court records. Upjohn contends the only

evidence that the documents were court records was an affidavit, filed by intervenors, which
contained numerous, general, unsubstantiated conclusions. Upjohn argues the Freemans

and intervenors "tendered none ofthe documents for an in camera review and offered no

evidence that any specific documents have a probable adverse effect on public health or

safety."3 Upjohn further argues that any finding by the trial court that the documents have

a probable adverse effect on public health or safety is arbitrary and unreasonable and

therefore an abuse of discretion. Upjohn also contends that by approving the drug for use

in the United States, the FDA has already determined that the public health and safety is

best served by making Halcion available for use in this country. Accordingly, Upjohn

concludes, these documents could not have a probable adverse effect on public health and

safety.

Application

The parties presented the trial court with a significant amount ofevidence regarding

the nature and subject matter of the documents. The trial court considered several affidavits

filed by the parties. The parties do not cite this Court to any objections lodged or sustained

with respect to the affidavits, nor does our review of the record find any objections lodged

or sustained.

Michael Mosher, one of the attorneys of record for the Freemans, reviewed all of the

documents in question. He testified that the documents could be placed into four

categories: (1) clinical study documents; (2) internal memoranda; (3) adverse reaction

5The Freemans had possession of the documents under a confidentiality agreement.
reports and analyses ofthe adverse reaction reports; and (4) miscellaneous other documents

including correspondence with third parties regarding Halcion and depositions with exhibits

from other cases around the country regarding Upjohn and Halcion. He further testified

that the overwhelming majority of the documents are made up of portions of the

Investigational New Drug Application (IND) and the New Drug Application (NDA) which

are required for FDA approval. Based onhis review ofthe documents, Mosher testified the

documents concern the safety and effectiveness of Halcion.

Kenneth Starz, M.D., associate clinical research director for Upjohn, is the medical

momtor for Halcion. He assisted in the preparation and analysis of the clinical study

documents contained in Upjohn's NDA for Halcion. He testified that the clinical study

documents contain safety and effectiveness data for Halcion and that the documents were

submitted to the FDA for consideration in the approval of Halcion.

Sidney Wolfe, M.D., isthe director ofPublic Citizen Health Research Group. Inhis

affidavit opposing the sealing of the documents, he testified that Halcion is the subject of

a petition, filed by Public Citizen with the FDA, requesting the FDA to require stricter

labeling of Halcion. The petition is intended to protect everyone who uses or may use

Halcion. He testified that although he had not reviewed the documents, the records likely

to be sealed in this case bear directly on the issues raised in the petition to the FDA.

Thomas Lee Kurt, M.D., M.P.H., is the actingmedical director for the North Texas

Poison Control Center. He formerly served as the regional medical officer for the FDA.

He testified that the IND and NDA that were filed with the FDA to obtain investigational

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permission and then marketing approval would ordinarily consist of (1) clinical study

documents, (2) correspondence between the FDA and Upjohn regarding warning labels,

instructions, and other labelling matters, (3) adverse drug reaction reports, and (4) various

reports published in medical literature. The clinical study documents would consist of,

among other things, (a) case report forms, (b) technical reports, (c) statistical reports, and

(d) executive summaries. In Kurt's opinion, the documents described to him concern

matters that have a probable adverse effect upon the general health orsafety. Indeed, he

believes "the contents of these documents contain information that concern the hazard to

public health from the use of this drug."

As notedpreviously, we review the trial court'sruling on themotion underthe abuse

of discretion standard. Upjohn, 847 S.W.2d at 590. The record contains conflicting

evidence. The trial court considered the evidence and determined that the documents

concern matters that have a probable adverse effect upon the general public health or

safety. A trial court does not abuse its discretion when it bases its decision on conflicting

evidence. We overrule point of error one.

Specific, Serious, and Substantial Interest

Legal Interpretation

Upjohn's Contentions

In point of error two, Upjohn contends the trial court abused its discretion in holding

that Upjohn failed to establish a protectable interest sufficient to justify a sealing order

under rule 76a. Upjohn argues the trial court ruled that the only substantial interest that

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could justify sealing is a trade secret, and this interpretation ignores other substantial

interests Texas courtsroutinely protect. Upjohn argues rule 76a does not define the types

of specific, serious, and substantial interests that will justify a sealing order, and the court

must protect substantive rights recognized under existing law. Upjohn contends it

established several substantial interests which would justify sealing under rule 76a, but the

trial court failed to acknowledge that other common-law, statutory, and constitutionally

protected rights are interests that may justify sealing under rule 76a. To support its

argument, Upjohn cites this Court to the July 9, 1993 sealing order and to the statement of

facts from the rule 76a hearing.

Application

The sealing order contains findings of fact as required by rule 76a. The trial court

found that the portion of the discovery documents containing Upjohn's protocols in testing

and analyzing Halcion contained trade secrets and that Upjohn demonstrated that its trade

secret interest justified sealing under rule 76a. The sealing order also contained the

following findings:

The Court further finds that, to the extent the Discovery

Documents contain documents that are not Protocols (the

"Remaining Documents"), Upjohn has failed to prove, by a

preponderance of the evidence, that its privacy rights, if any,

or right to a fair trial are specific, serious and substantial

interests under Rule 76a(l)(a). The Court further finds that

the Remaining Documents do not contain trade secrets. The

Court further finds that Upjohn has failed to show by a

preponderance of the evidence any other specific, serious, and

substantial interests under Rule 76a(l)(a). Alternatively, the

Court finds that, with respect to the Remaining Documents,

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Upjohn has failed to demonstrate, by a preponderance of the

evidence: (a) a specific, serious and substantial interest which

clearly outweighs (1) the Rule 76a presumption of openness,

and (2) any probable adverse effect that sealing will have upon

the general public health or safety; and (b) no less restrictive

means than sealing the Remaining Documents will adequately

and effectively protect the specific interest asserted ....

(Emphasis added.)

At the rule 76a hearing, the trial court stated:

The court finds that the protocols themselves are trade secrets

and for that reason would be exempt from discovery and

disclosure. The court finds that all of the other documents are

court records within the meaning of rule 76a, and that the

movant has failed to establish a basis under rule 76a for the

court to seal the records and thus overcome the presumption of

openness. The court finds that the presumption has not been

rebutted. . . . [T]he motion to seal is denied.

The record does not support Upjohn's assertion that the trial court considered the

only substantial interest that could justify sealing is a trade secret. To the contrary, the

record indicates that the trial court considered all of the interests that Upjohn asserted.

Sealing was denied based upon Upjohn's failure to prove the interests it asserted. The

order specifically finds that Upjohn failed to prove by a preponderance of the evidence that

its privacy rights, right to a fair trial, trade secret interest (with respect to the "Remaining

Documents"), or any other interests were specific, serious, and substantial interests under

rule 76a(l)(a).

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Factual Findings

Upjohn's Contentions

Upjohn contends that any factual findings on this issue were arbitrary and

unreasonable. Upjohn claims it established several substantial interests which would justify

sealing under rule 76a, including: (1) the documents contain confidential business

information which is protected under existinglaw; (2) public dissemination of the documents

would constitute an unconstitutional invasion of its right to privacy; (3) public dissemination

of the documents would prejudice Upjohn's due process right to a fair trial; and (4) the

documents contain trade secrets. Further, Upjohn contends that its interests clearly

outweigh the presumption of openness and that Upjohn established that its interests cannot

be protected by less restrictive means.

Upjohn contends the affidavits of Drs. Robert Straw, Judith Jones, and Kenneth

Starz established: (1) the documents contain confidential business information; (2) public

dissemination of the documents would constitute an unconstitutional invasion of its right to

privacy, anunconstitutional taking ofproperty, and prejudice Upjohn's due process right to

a fair trial, and (3) the documents contain trade secrets.

Upjohn points to the FDA approval ofHalcion to establish that continued protection

of Upjohn's right of confidentiality would not have a probable adverse effect upon the

general public health and safety. Upjohn relies on Jacobs v. Dista Prods. Co., 693 F. Supp.

1029, 1035 (D. Wyo. 1988) (by allowing prescription drug to be marketed and sold, FDA

has determined that legitimate public interest in its availability outweighs any adversities that

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might arise in course of its usage).

The Evidence in the Record

Straw is the director of project management for Upjohn. He testified that Upjohn

would suffer competitive and commercial harm if the case report forms, technical and

statistical reports, and executive summaries were released to the general public. He

explained in detail how competitors could use the information contained in the documents

to develop and market drugs.

Starz is an associate clinical research director for Upjohn. Using almost identical

language as Straw, Starz testified about the competitive and commercial harm from release

of the documents to the public.

Jones was the director for the division of drug and biological experience for the FDA.

She testified that NDA case report forms, statistical reports, technical reports, and executive

summaries are protected from public dissemination to maintain the proprietary and

confidential nature of the material in order to uphold the protection of the patent. She

stated that such data, when separated from the application as a whole, might be misleading

or misinterpreted.

Dr. Elmer Gardner, the former director of the division of neuropharmacological

products for the FDA, testified that the FDA thoroughly reviewed and evaluated the

documents in question and properly concluded that Halcion is safe and effective. He

concluded the continued protection of the documents would not have a probable adverse

effect upon the general public health and safety.

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On the other hand, Mosher, counsel of record for the Freemans, testified in his

affidavit that the results of some of the clinical trials have been published in medical

literature. Once the patent expires on Halcion, some documents which had previously been

protected would no longer be protected.6 Adverse reaction reports are available from the

FDA through a Freedom of Information Act request. Some of the documents include

letters written by third parties to Upjohn complaining about Halcion or notifying Upjohn

about experiences with Halcion. He also testified that Halcion has had significantly more

adverse reaction reports than other drugs in its class and that doses of Halcion greater than

0.25 mg have been banned in other countries.

Kurt, medical toxicologist and acting medical director for the North Texas Poison

Control Center, testified that the serious side effects caused by Halcion make it unsafe for

general use. In his opinion, Halcion poses an unreasonable risk of dangerous, even fatal,

side effects and should be banned in the United States as it has been in the United Kingdom

and other countries. In his opinion, no interest that could be asserted by Upjohn could

outweigh the general public's need to become fully informed about Halcion before it is

taken, as well as the medical community's decision to continue to prescribe it.

Application

The trial court determined that Upjohn failed to establish a basis (other than trade

secrets with respect to the "protocols") under rule 76a for the court to seal the records.

6Halcion went off patent in October 1993.

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Alternatively, the trial court found that Upjohn failed to demonstrate by a preponderance

of the evidence an interest which, in balance against the public's interest, justified sealing

all of the documents. The trial court determined that based on the evidence presented to

it, the presumption of openness had not been rebutted.

Having reviewed the entire record, including part of the subject documents, we

conclude the record supports the trial court's findings. The record contains evidence of

compelling reasons supporting the presumption of openness. The trial court based its

decision on conflicting evidence. Consequently, there can be no abuse of discretion. Davis,

571 S.W.2d at 862; Recon, 798 S.W.2d at 851. We overrule point of error two.

The "Protocol Documents"

Incross-point oferror one, the Freemans contend the trial court erred infinding that

any Upjohn documents were confidential or contained trade secrets. The Freemans argue

that: (1) the clinical trial documents were not confidential because they are available tothe

public from the FDA and (2) Upjohn is collaterally estopped from arguing that any of its

documents were trade secrets or otherwise confidential because Upjohn was a party in

Grundberg v. Upjohn, 137 F.R.D. 372 (D. Utah 1991) (hereinafter Grundberg I).

FDA Release of Information

The Freemans rely upon a letter, dated March 10, 1993, from the FDA to Upjohn

to support their claim that the documents in question have been released to the public.

Upjohn responds with an affidavit from one of its attorneys who routinely monitors the

release ofinformation from the FDA. Neither document was before the trial court at the

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hearing on the sealing order, nor are the documents properly before this Court. The

Freemans do not cite this Court to anything in the record to support their contention. An

appellant has the burden to present a sufficient record to show reversible error. See Tex.

R. App. P. 50(d). We require an appellant to identify the places in the record that support

its complaint. See Keene Corp. v. Gardner, 837 S.W.2d 224, 229 (Tex. App.-Dallas 1992,

writ denied). We are not required to search the record to determine if appellant's

contentions are valid. See Keene, 837 S.W.2d at 229.

Nevertheless, we searched the entire record for some evidence ofwholesale public

release of the documents by the FDA. We were unable to find evidence supporting the

Freemans' contentions. The record does, however, contain evidence supporting the trial

court's finding that the portion of the discovery documents that contain Upjohn's protocols

in testing and analyzing Halcion contain trade secrets. A trade secret may consist of any

formula, pattern, device, or compilation of information which is used in one's business and

which gives one an opportunity to obtain an advantage over competitors who do not know

or use it. Hyde, 314 S.W.2d at 776; Rugen, 864 S.W.2d at 552. Drs. Straw, Jones, and Starz

all testified at length regarding the competitive and commercial harm to Upjohn if the

information contained in the documents were released.

Collateral Estoppel

The trial court has broad discretion in determining whether or not to apply the

doctrine of collateral estoppel. Parklane Hosiery Co. v. Shore, 439 U.S. 322, 328 (1979);

Scurlock Oil Co. v. Smithwick, 724 S.W.2d 1, 7 (Tex. 1986). Collateral estoppel precludes

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relitigation of any ultimate issue of fact actually litigated and essential to the judgment in a

prior suit. Tarter v. Metropolitan Sav. & Loan Ass'n, 744 S.W.2d 926, 927 (Tex. 1988);

Bonniwell v. BeechAircraft Corp., 663 S.W.2d 816, 820-21 (Tex. 1984).7 A party seeking

to invoke the doctrine must establish: (1) the facts sought to be litigated in the second

action were fully and fairly litigated in the prior action; (2) those facts were essential to the

judgment in the first action; and (3) the parties were cast as adversaries in the first action.

Bonniwell, 663 S.W.2d at 820-21. We give the prior adjudication of an issue estoppel effect

only if it was adequately deliberated and firm. Cockrell v. Republic Mortgage Ins. Co., 817

S.W.2d 106, 115 (Tex. App.-Dallas 1991, no writ).

The Freemans contend that Upjohn was a party in Grundberg I, where the precise

issues before the trial court were litigated and that "Upjohn litigated; Upjohn lost."

Grundberg I considered whether discovery documents produced in the underlying products

liability case involving Halcion should continue to be regarded as confidential orotherwise

restricted. Following a two-day evidentiary hearing, the district court entered findings offact

and conclusions of law. The district court stated, "Upjohn cannot claim trade secrets or

confidentiality as to information set forth in the case report forms,.. . [ and the] technical

and statistical reports not authored by Upjohn cannot properly be classified as confidential

to Upjohn." However, the court recognized problems of possible prejudice to the jury

7The Fi eem?ns assert collateral estoppel against Upjohn in astate proceeding based on aprior holding in afederal court. We

need not decide whetherto use federal or state collateral estoppel law, because there islittle difference between the federal courts'

formulation of the doctrine and our own. See Sysco Food Servs., Inc. v. Trapnell, 890 S.W.2d 796,801 n. 7(Tex. 1994); Eagle

Properties, Ltd.v. Scharbauer, 807 S.W.2d 714, 721 (Tex. 1990).

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because of pretrial publicity if documents and materials were released before trial. It also

noted that certain documents might contain trade secrets and confidential information

requiring rulings on admissibility and public access which could best be determined at trial.

Grundberg I, 137 F.R.D. at 391, 394-95. The protective order remained in force until those

documents were admitted into evidence at trial or otherwise used at trial. Grundberg I, 137

F.R.D. at 396. Based upon a voluntary and unconditional stipulation for dismissal by the

parties, the district court dismissed the case. The preexisting protective order was left in

place. Freeman and Public Citizen filed motions to intervene to gain access to the

documents, and the parties asked to modify the protective order. The district court denied

the motions to intervene and modified the protective order. Grundberg v. Upjohn, 140

F.R.D. 459, 461-63 (D. Utah 1991) (hereinafter Grundberg II).'

The district court's prioradjudication ofwhether thedocuments inquestion contained

trade secrets and confidential information was not final. The Grundberg I court specifically

noted thatits preliminary determinations might change at trial. Grundberg /, 137 F.R.D. at

391. In Grundberg I and Grundberg II there was no final adversarial adjudication of the

claims of privilege and the propriety of sealing documents because of the settlement and

voluntary dismissal of the case. The district court denied Public Citizen's and Freeman's

right to intervene. Therefore, they could not fully litigate the remaining issues.

8We note that the district courtstated "that substantial harm could occur by the wholesale rendition ofimmediate public access

tothe documents inthis case, and courts which require production may well determine toimpose the same restrictions as were

imposed by this court, pending of course public hearings. This court, of course, does not direct any other court or body as to such

matters, since those determinations must be made under the discovery rules and other considerations applicable in the jurisdiction

in question." Grundberg II, 140 F.R.D. at 473.

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The claims of privilege in Grundberg I and Grundberg II were not adequately

deliberated and firm. We give the prior adjudication of an issue preclusive effect only if it

was adequately deliberated and firm. See Cockrell, 817 S.W.2d at 115; see also Morgan v.

Deere Credit, Inc., 889 S.W.2d 360, 367 (Tex. App.-Houston [14th Dist.] 1994, no writ).

The trial court did not abuse its discretion in refusing to apply the doctrine of collateral

estoppel to preclude Upjohn from litigatingwhether the documents contained trade secrets

or confidential information. We overrule cross-point of error one.

Mootness

In cross-point of error two, the Freemans contend that Upjohn's appeal is moot

because Halcion is now off patent. The mootness doctrine limits courts to deciding cases

in which an actual controversy exists. FDIC v. Nueces County, 886 S.W.2d 766, 767 (Tex.

1994). The controversy in this case involves whether the documents in question are court

records and whether Upjohn met the requisite burden under rule 76a tojustify sealing. If

Upjohn ceased to have an adequate interest in the documents once the patent on Halcion

expired, any controversy between the parties would end. However, the record does not

support the Freemans' contention that any commercial interest Upjohn might have claimed

expired in October 1993 when Halcion went off patent. The record is not clear about what

documents the FDA releases once a drug goes off patent. Certainly it is not clear if the

documents containing trade secrets would be released. An appellant has the burden to

present asufficient record to show reversible error. See Tex. R. App. P. 50(d). We require

an appellant to identify the places in the record that support its complaint. See Keene, 837

•21-
S.W.2d at 229. Because the Freemans fail to support their contention, we overrule crosspoint of error two.

We affirm the trial court'sjudgment.

Publish

Tex. R. App. P. 90

931925F.P05

-22-
*fs^*^mi^m^^^^^^^"-A

(Court of Appeals

STxftff Itstrtr/t of Okxas at lailas

JUDGMENT

THE UPJOHN COMPANY, Appellant

No. 05-93-01925-CV V.

WILLIAM R. FREEMAN, MARTHA

FREEMAN, Individually and as next

friend and guardian of SEAN PERRY

FREEMAN, a Minor Child, SUZANNE

E. FREEMAN, as next friend and

guardian of LEAH SUZANNE

FREEMAN and WILLIAM LANCE

FREEMAN, Minor Children, and LORI

YVONNE FREEMAN, PUBLIC

CITIZEN, THE DALLAS MORNING

NEWS, Appellees

Appeal from the 14th Judicial District

Court of Dallas County, Texas. (Tr.Ct.No.

89-09648-A).

Opinion delivered byJustice James, Chief

Justice Thomas and Justice Maloney

participating.

In accordance with this Court's opinion ofthis date, the judgment ofthe trial court

is AFFIRMED. It is ORDERED that appellees William R. Freeman, Martha Freeman,

Individually and as next friend and guardian of Sean Perry Freeman, a Minor Child,

Suzanne E. Freeman, as next friend and guardian of Leah Suzanne Freeman and William

Lance Freeman, Minor Children, Lori Yvonne Freeman, Public Citizen, and The Dallas

Morning News recover their costs of this appeal from appellant The Upjohn Company and

from the cash deposit in lieu of cost bond. After all costs have been paid, the clerk of the

district court is directed to release the balance, if any, of the cash deposit to Baker &Botts,

as counsel for appellant The Upjohn Company.

Judgment entered July 13, 1995.