IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

Magistrate Judge Kathleen M. Tafoya

Civil Action No. 11–cv–01961–REB–KMT

ENERGY INTELLIGENCE GROUP, INC., and

ENERGY INTELLIGENCE GROUP (UK) LIMITED,

Plaintiffs,

v. 

WELLS FARGO SECURITIES, LLC, f/k/a WACHOVIA CAPITAL MARKETS, LLC, 

Defendant.

ORDER

This matter is before the court on “Plaintiffs’ Motion for Entry of a Protective Order”

[Doc. No. 30] filed December 30, 2011 (“Mot.”) and “Defendant’s Response to Plaintiffs’

Motion for Entry of Protective Order” [Doc. No. 36] filed January 17, 2012 (“Resp.”). Both

sides attached proposed Protective Orders for the court’s consideration.

The parties disagree about only one provision of the proposed Protective Order 

concerning the disclosure to one another of sensitive and confidential material. In paragraph 4 of

the Protective Order which begins “4. Confidential Information shall not be disclosed or used

for any purpose except the preparation and trial of this case (and any appeals thereof) . . . .”

Plaintiffs wish to add an exception which reads

with the exception that nothing herein shall prohibit either party from using any

information learned in this proceeding, including from any Confidential

Case 1:11-cv-01961-REB-KMT Document 38 Filed 02/03/12 USDC Colorado Page 1 of 5
2

Information, to serve as the basis for the necessary information and belief to

commence subsequent litigation proceedings.

Mot. at 2. Defendants, on the other hand, wish to end paragraph four after “(and any appeals

thereof).”

Plaintiffs maintain that if discovery provides evidence that Defendant has distributed

Plaintiffs’ publications to third parties, they will be precluded from using that information to

bring infringement actions against such third parties, if any. Id. Plaintiffs state they “do not seek

to use any documents produced in this lawsuit in future lawsuits, they only seek to use

information learned from the documents to form the necessary information and belief to bring

subsequent suits, if any.” Id.

The parties do not dispute the need for a Protective Order and the fact that confidential

material is and will be discoverable. In fact, the parties are apparently disclosing such

information currently under an agreement that all documents are “attorneys’ eyes only” until the

disputed issue regarding the protective order is resolved by the court. (Mot. at 3.)

The scope of discovery in a civil action is governed by Rule 26(b)(1), which provides

that “[p]arties may obtain discovery regarding any matter, not privileged, that is relevant to the

claim or defense of any party.” Fed. R. Civ. P. 26(b)(1). Note 2 of the Advisory Committee’s

Notes to the 2000 amendments to that Rule makes it clear that the scope of discovery is

restrictive, and that “fishing expeditions” for new claims are no longer permitted.

The Committee intends that the parties and the court focus on the actual claims

and defenses involved in the action.

. . . .

Case 1:11-cv-01961-REB-KMT Document 38 Filed 02/03/12 USDC Colorado Page 2 of 5
3

The rule change signals to the court that it has the authority to confine discovery

to the claims and defenses asserted in the pleadings, and signals to the parties that

they have no entitlement to discovery to develop new claims or defenses that are

not already identified in the pleadings.

2000 Advisory Committee’s Notes to Fed. R. Civ. P. 26 (emphasis added). The court

understands the Plaintiffs argument to be speculative; e.g., if in the normal and regular course of

obtaining discoverable information in this case, the Plaintiffs become aware of instances of third

party infringement, they wish to be able to use this information as part of the foundation to bring

a lawsuit against such third party, even if the information originally received from Defendant is

“confidential.”

Both forms of submitted Protective Order have a provision for contesting the designation

of a document or other evidence as “confidential” and subject to the provisions in the Protective

Order. (Mot., Ex. A at ¶ 8; Resp., Ex. A at ¶ 8.) Paragraph 8 of the Protective Orders provides a

mechanism whereby a party can gain an exemption from an initial designation of “confidential”

either by mutual agreement or through court proceedings. Since the Plaintiffs do not know

whether any confidential information received from Defendant actually will give rise to an

infringement claim against third parties, the court sees paragraph 8 to be a more suitable vehicle

to protect the interests of both parties and allow the production of confidential material to

proceed. Therefore, the court will disallow the modification of paragraph four as proposed by

the plaintiffs and instead modify paragraph 8 of the Protective Order as follows:

8. A party may object to the designation of particular Confidential Information by

giving written notice to the party designating the disputed information. The

written notice shall identify the information to which the objection is made.

Further, a party may request that information otherwise considered to be

Case 1:11-cv-01961-REB-KMT Document 38 Filed 02/03/12 USDC Colorado Page 3 of 5
4

confidential be distributed or disclosed under certain specified conditions. If the

parties cannot resolve the objection or the request to disseminate identified

information within ten (10) business days after the time the notice or request is

received, it shall be the obligation of the party designating the information as

Confidential Information to file an appropriate motion requesting that the Court

determine whether the disputed information should be subject to the terms of this

Protective Order. If such a motion is timely filed, the disputed information shall

be treated as Confidential Information not to be disseminated outside terms of

this Protective Order until the Court rules on the motion. If the designating party

fails to file such a motion within the prescribed time, the disputed information

shall lose its designation as Confidential Information and shall not thereafter be

treated as Confidential Information in accordance with this Protective Order. In

connection with a motion filed under this provision, the party designating the

information as Confidential Information shall bear the burden of establishing that

good cause exists for the disputed information to be treated as Confidential

Information.

Additionally, of course, the provisions of paragraph 5(h) of the Protective Order as

agreed to by both parties could likewise be invoked to the extent the parties concur on specific

disclosures.

The Protective Order, as modified herein, complies with the standards set forth in Gillard

v. Boulder Valley Sch. Dist. Re-2, 196 F.R.D. 382 (D. Colo. 2000) and therefore will be the order

of the court.

Case 1:11-cv-01961-REB-KMT Document 38 Filed 02/03/12 USDC Colorado Page 4 of 5
5

It is ORDERED

 “Plaintiffs’ Motion for Entry of a Protective Order” [Doc. No. 30] is GRANTED in part

and DENIED in part consistent with this Order. A Protective Order as described herein will be

entered on the record.

Dated this 3d day of February, 2011.

Case 1:11-cv-01961-REB-KMT Document 38 Filed 02/03/12 USDC Colorado Page 5 of 5