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Epic Systems Corp. v. Tata Consultancy Services Ltd.

United States District Court, W.D. Wisconsin

November 2, 2016



          WILLIAM M. CONLEY District Judge.

         There are a number of post-trial motions pending. In this opinion and order, the court addresses those motions concerning the court's entry of a permanent injunction (dkt. #888). Specifically, the court addresses: (1) plaintiff Epic Systems Corporation's motion to amend the injunction (dkt. #909); (2) the appointment of a monitor; and (3) the parties' recent filings concerning defendants' compliance, or lack thereof, with the injunction.


         I. Plaintiff's Motion to Amend Injunction

         Plaintiff requests several changes to the permanent injunction, providing the court with a redlined version reflecting the proposed changes. The court will address each in turn. First, plaintiff seeks to include the jury's finding of breach of the Standard Consultant Agreement as an additional basis for ordering injunctive relief -- in addition to the two other bases already listed for misappropriation of trade secrets and the CAFA violation. Curiously, this proposed change is in the court's order explaining the breadth and conditions of the permanent injunction, rather than in the language of the injunction itself. The court previously considered plaintiff's request but rejected it because of the lack of support of the availability of injunctive relief as part of the breach of contract claim. While the contract states that a violation of the Agreement may cause “irreparable harm, ” this serves as an insufficient basis to order injunctive relief, especially where the statutory claims provide expressly for that remedy. Moreover, plaintiff utterly fails to describe how it is prejudiced from the preamble to the injunction not listing the breach of contract claim as a basis for ordering injunctive relief. The inclusion of that claim does not substantively change the reach or requirements of the injunction. As such, that specific request is denied at this time as moot.

         Second, Epic takes issue with the injunction remaining in effect for four years, seeking deletion of that reference. The court will maintain the four-year timeline, however, finding that any value of the confidential information, which was obtained in 2014, would be limited value by the end of the four-year period in 2020, or at least plaintiff has failed to demonstrate otherwise. Relatedly, and to be fair to Epic, the court will not impose the proposed two-year limit added by Epic to the redlined version at § 3.d.

         Third, Epic seeks to amend the description of “Confidential Information” in § 2.d to include “any other Epic confidential information as defined in the parties' Standard Consultant Agreement (Trial Ex. 3) [that] TCS acquired from Epic personnel or by accessing UserWeb or Kaiser Permanente.” Epic contends that this change is necessary because “TCS employees did not access and view only the documents that were actually downloaded; rather, TCS employees viewed materials directly on the UserWeb and would also copy and paste into emails and word documents the contents of documents accessed through the UserWeb.” (Pl.'s Br. (dkt. #910) 5.) The court understands plaintiff's concern, but instead of adopting Epic's proposed language, will simply add “including the content of the documents” after “the documents” in the definition. This specific request is, therefore, granted in part and denied in part.[1]

         Fourth, Epic responds to the court's invitation to specify individuals who are not permitted to work on software development for TCS in § 3.d. The court will adopt plaintiff's proposal, finding the language sufficiently clear and narrow. To address TCS's concern about it being overbroad, the court, however, will insert “directly” before “supervised or managed.” As such, this request is granted with a minor modification.

         Fifth, Epic seeks to include a requirement that TCS provide written notice to all TCS employees about the permanent injunction. TCS did not oppose this change. As such, the court will adopt it as unopposed.

         Sixth, Epic seeks to include language indicating that the costs of the monitor --which the court placed on Epic -- could be shifted to TCS if TCS were to violate the injunction. The possibility of cost-shifting need not be spelled out in the injunction, since the court retains the authority to impose such payment as part of remedial relief should it find TCS in contempt. Nonetheless, the court sees no reason not to state expressly the possibility of cost-shifting. Accordingly, the court will make that change, with the understanding that any shift in costs still rests within this court's discretion.

         Seventh, as a minor request, Epic seeks to include language that the court retains jurisdiction to modify the injunction (in addition to enforcing it). TCS does not oppose this change. As such, the court will adopt it as well.

         Consistent with the court's rulings, the amended permanent injunction appears below.

         II. Appointment of Monitor

         The permanent injunction includes the appointment of a monitor. Not surprisingly, the parties could not agree on a monitor. Epic submitted four possible monitors, including as its first pick, Samuel Rubin of Stroz Friedberg, LLC, who also served as an expert in this case. (Pl.'s Submission (dkt. #925).) For their part, defendants submitted Navigant Consulting, Inc. (Defs.' Submission (dkt. #923).) All of the proposed monitors appear qualified to fill the role. Rubin and his firm Stroz Freidberg have the advantage, of course, of already being familiar with the facts of this case, the technology involved, and TCS's system and practices for data management. TCS opposed Rubin's appointment on the basis of bias, arguing that he would “step into the monitoring role not as an objective third party but as Epic's expert.” (Defs.' Submission (dkt. #923) 4.) The court does not agree that Rubin's prior experience with this case somehow biases him in a way that he would now exploit in the position of monitor to benefit Epic. Instead, his knowledge and prior experience will provide him with a significant head-start in providing the services contemplated by the permanent injunction. Moreover, given that Epic will be directing the ...

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