United States District Court, W.D. Wisconsin
OPINION AND ORDER
WILLIAM M. CONLEY District Judge.
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.
Plaintiff's Motion to Amend Injunction
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.
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.
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
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
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.
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
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.
with the court's rulings, the amended permanent
injunction appears below.
Appointment of Monitor
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