Ex parte Robert Bosch LLC. ( 2014 )

Rel: 12/12/2014
Notice: This opinion is subject to formal revision before publication in the advance
sheets of Southern Reporter. Readers are requested to notify the Reporter of Decisions,
Alabama Appellate Courts, 300 Dexter Avenue, Montgomery, Alabama 36104-3741 ((334)
229-0649), of any typographical or other errors, in order that corrections may be made
before the opinion is printed in Southern Reporter.
SUPREME COURT OF ALABAMA
OCTOBER TERM, 2014-2015
_________________________
1130840
_________________________
Ex parte Robert Bosch LLC
PETITION FOR WRIT OF MANDAMUS
(In re: Dorothy Kilgo, individually and as personal
representative of the Estate of Ernest Ronald Kilgo, Jr.,
deceased
v.
Donnice Milam Smith et al.)
(Etowah Circuit Court, CV-11-900399)
MAIN, Justice.
1130840
One of the defendants below, Robert Bosch LLC ("Bosch"),
petitions this Court for a writ of mandamus directing the
Etowah Circuit Court ("the trial court") to vacate or, in the
alternative, to amend the provisions of its order granting the
request for production of Bosch's "air bag system Electronic
Control Unit" ("ECU") filed by the plaintiff below, Dorothy
Kilgo ("Kilgo"), individually and as the personal
representative of the estate of Ernest Ronald Kilgo, Jr.,
deceased. We grant the petition and issue the writ.
I. Facts and Procedural History
On March 17, 2011, Kilgo and her husband, Ernest Ronald
Kilgo, Jr. ("Ron"), were passengers in a 2008 PT Cruiser motor
vehicle that Ron's stepson was driving in Etowah County.
While they were waiting for an oncoming motor vehicle to pass
through an intersection so that they could make a left turn,
the Kilgos' vehicle was struck from behind by another motor
vehicle. The impact of that collision propelled the Kilgos'
vehicle into the intersection, where it was struck head-on by
an oncoming motor vehicle. Ron, who was sitting in the front
passenger-side seat, suffered severe injuries and died several
days later as a result of those injuries. The front
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passenger-seat air bag failed to deploy during either the rear
or the head-on collisions, and the front passenger-side seat-
belt "pretensioner," which is supposed to cause the seat belt
to "lock" immediately after a collision, did not activate.
However, one of the two front driver-side air bags deployed
during the collisions, and the front driver-side seat-belt
pretensioner was activated as well.
In September 2011, Kilgo filed in the trial court a
wrongful-death complaint, naming several defendants,
including, among others, Bosch, who designed and manufactured
the ECU in the Kilgos' vehicle. Sometime thereafter, Kilgo
served a notice of taking the deposition of a corporate
representative of Bosch. The deposition notice included
numerous topics for which testimony and documents were
requested. Item no. 5 of the deposition notice requested
"[t]estimony and documents relating to the algorithms which
are used to deploy the supplemental restraint systems of the
2008 Chrysler PT Cruiser, including, but not limited to, the
air bags and seat-belt pretensioners" (hereinafter referred to
as "the algorithm"). Bosch filed a response objecting to
Kilgo's deposition notice and moved for a protective order
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with regard to several of Kilgo's requests for production,
including Kilgo's request for the algorithm. In the motion,
Bosch argued that the algorithm is a trade secret and, thus,
Bosch said, protected from discovery under Rule 507, Ala. R.
Evid.;1 Rule 26(c)(7), Ala. R. Civ. P.;2 and the Alabama Trade
Secrets Act, Ala. Code 1975, § 8-27-1 et seq.
1
Rule 507, Ala. R. Evid., provides:
"A person has a privilege, which may be claimed
by the person or the person's agent or employee, to
refuse to disclose and to prevent other persons from
disclosing a trade secret owned by the person, if
the allowance of the privilege will not tend to
conceal fraud or otherwise work injustice. If
disclosure is directed, the court shall take such
protective measures as the interest of the holder of
the privilege and of the parties and the interests
of justice require."
2
Rule 26(c)(7), Ala. R. Civ. P., provides:
"Upon motion by a party or by the person from whom
discovery is sought, and for good cause shown, the
court in which the action is pending or,
alternatively, on matters relating to a deposition
or production or inspection, the court in the
circuit where the deposition or production or
inspection is to be taken may make any order that
justice requires to protect a party or person from
annoyance, embarrassment, oppression, or undue
burden or expense, including ... that a trade secret
or other confidential research, development, or
commercial information not be disclosed or be
disclosed only in a designated way ...."
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Bosch supported its motion for a protective order with
the affidavit of Matthew Coon, Bosch's "Director of
Engineering for Airbag ECU development." In his affidavit,
Coon stated, in pertinent part:
"5. The Algorithm (referred to as 'the Algorithm'),
and related subroutines, are a set of mathematical
calculations and logical steps that the
microprocessor of the ECU goes through to operate
the ECU. Proprietary software inside the ECU runs
and employs the Algorithm. Both the software and the
Algorithm are highly proprietary and unique to
Bosch.
"6. The Algorithm sought by [Kilgo] is an extremely
confidential trade secret that provides Bosch a
competitive advantage over other companies in the
automotive restraint system industry. The Algorithm
and information related to it are owned solely by
Bosch and, to Bosch's knowledge, they are not known
by anyone outside of Bosch, especially Bosch's
competitors, except as described in paragraph 8
below. Only certain Bosch employees on the project
team have access to the Algorithm. Bosch derives
independent economic value, actual and potential,
because the information is not known to other
persons or companies.
"7. To my knowledge, the Algorithm has not been
produced or disclosed to any federal, state or local
agency, nor has it been produced or disclosed in
connection with civil litigation or any court
proceeding, or to any Bosch customer.
"8. I have knowledge about the security controls in
place at the company to ensure that the Algorithm is
protected from disclosure by unauthorized persons.
Access to these documents is tightly controlled
inside the company. A small number of Bosch
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employees have access to the information. Only those
Bosch employees who need to know the information to
perform their jobs have access to the information.
Within Bosch, access to this information is limited
electronically to certain designated employees to
ensure it is not disseminated to any person or
entity outside Bosch.
"9. Bosch is heavily engaged in and committed to
research and development of new designs and
performance for the ECU. Disclosure of the Algorithm
and documents related to the Algorithm would allow
other persons to take advantage of Bosch's expertise
and expenditures in new product development.
"10. Bosch has spent over 25 years developing
algorithms like the one requested by [Kilgo]. Over
those years, Bosch has spent hundreds of millions of
dollars researching, designing, and developing and
protecting algorithms like the one requested by
[Kilgo]. Bosch has employed scientists, engineers,
and programmers to research, design, and develop
this information. The Algorithm cannot be
ascertained or derived from publicly available
information.
"11. The automotive restraint system industry is a
very competitive industry. Companies such as Bosch
and its competitors stand to gain or lose literally
hundreds of millions of dollars each year based upon
the design and production of state of the art
products such as Bosch's ECUs, which incorporate the
Algorithm like the one in the subject ECU. If data
and information contained in documents relating to
its algorithms were to be disclosed outside of
Bosch, those who obtain such information would be
able to understand the scientific and engineering
thought and design processes employed by Bosch when
designing, programming, and building its ECUs. By
supplying this confidential and secret information,
Bosch would effectively be providing [Kilgo's]
experts with a blueprint to build their own
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competitive version of Bosch's ECU. While [Kilgo]
and her counsel may not actually possess the tools
or the knowledge to construct their own ECU,
[Kilgo's] experts most certainly do and would stand
to gain financially if provided with the Algorithm.
"12. If Bosch were ordered to disclose the above
documents and data it would, in effect, hand over
the results of years and millions of dollars worth
of internal research and development at Bosch's sole
cost. If Bosch's Algorithm were to be disclosed
outside of Bosch there is no quantifiable amount of
money that could compensate Bosch for the loss of
revenues, profits, jobs, and competitive advantage
it would suffer as a result of the dissemination of
this information and these design processes. Not
only would the disclosure of this information cause
Bosch to suffer competitive disadvantages, it would
enable any receiving party to unfairly and unjustly
receive a tremendous financial windfall, gain, and
profit from the possession and utilization of this
proprietary information."
Kilgo filed a response objecting to Bosch's motion for a
protective order, arguing, in part:
"12. The results of the December 6, 2013[,]
testing [of the Kilgos' vehicle] showed that the
passenger airbag did not deploy and the passenger
seat belt 'pretensioner or tensioner' did not deploy
-- fully explaining how [Ron's] body was allowed to
contact the forward interior areas of the subject
vehicle. The electrical continuity tests themselves
established that the wiring and electrical systems
of the vehicle were functioning properly. Upon
visual examination of the passenger airbag cannister
itself, the cannister appeared to be equipped with
an airbag and no obvious defects of the actual
airbag were discovered. ...
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"13. The airbag system components manufactured
by Robert Bosch[] LLC are intended to sense and
deploy [sic] crashes which can cause significant
injury to occupants of vehicles like the subject
vehicle. These sensors are located in the forward
sections of the vehicle and are connected directly
to the 'ECU.' The ECU is a computer device
containing microprocessors which have been
programmed (with the use of mathematical algorithms)
to deploy the supplemental restraint system airbags
and seat belt tensioners in the event a deployment
crash is detected. ...
"14. During the subject crash of March 17, 2011,
there was partial deployment of the driver airbag
system and the driver seat belt pretensioner. There
was no deployment of stages 1 or 2 of the passenger
airbag or passenger seat belt pretensioner. ...
"15. Due to the condition of the vehicle's
supplemental restraint system post-accident, it is
apparent that the ECU and/or sensors failed to
properly deploy the passenger seat belt pretensioner
and stages 1 and 2 of the passenger airbag. This
directly points to the failure of the crash sensing
system and the algorithms which discriminate and
define the crash conditions necessary for deployment
of the safety devices used to protect occupants of
the subject vehicle. ...
"16. The design of the crash sensing algorithm
and the specific calibration used to calibrate the
sensors with the algorithm are reasonable inquiries
in this particular case to determine whether the
algorithms and crash sensing calibrations were
defective, thus making the ECU defective in its role
in deployment of the supplemental restraint systems
in the subject Chrysler PT Cruiser."3
3
Bosch claims that the algorithm does not "physically
deploy[] the airbag[s] or [seatbelt] pretensioners." Rather,
Bosch claims, the algorithm is responsible for making the
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Kilgo supported her response to Bosch's motion for a
protective order with certain documentary evidence, including
the affidavit of Chris Caruso, one of Kilgo's experts. In his
affidavit, Caruso stated that he has "personal knowledge,
experience and education with respect to the design and
function of supplemental restraint systems and, in particular,
airbags" and that he had "review[ed] ... documents in the
above-styled cause and the subject 2008 Chrysler PT Cruiser
... and its supplemental restraint systems." Caruso further
stated:
"15. Based upon the two inspections I have
conducted or participated in, it is apparent to me
that the root cause [of the failure of the front
passenger-side air bag and seat-belt pretensioner to
activate] appears to be a failure in the crash
sensing system to properly detect and discriminate
crash conditions. Based upon my years of experience
in designing these systems, the most probable
failure was a design of the crash sensing algorithm
(mathematical formula) or the specific calibration
used in the subject vehicle.
"16. The deployment of the knee bolster airbag
and the driver seat belt pretensioner (and the
failure of the passenger airbag, driver steering
column airbag and passenger seat belt pretensioner)
clearly indicate a system that was defectively
designed and failed to determine the high level of
"operational decision to deploy the airbags and
pretensioners."
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severity experienced in the subject crash of March
17, 2011."4
The trial court held a brief hearing on Bosch's motion
for a protective order. Thereafter, on March 20, 2014, the
trial court entered an order, which stated, in pertinent part:
"[T]he Court determines that said algorithm and
calibrations do in fact constitute a trade secret
and warrant the protection of the Court.
"The Court further determines that [Kilgo] has
shown to this Court the necessity and relevance of
the requested information.
"The Court has weighed the harm to the trade
secret's owner against the need for disclosure. The
need to prevent disclosure does not outweigh the
benefit of the disclosure to what the Court
determines to be relevant evidence.
"The information requested shall be provided to
[Kilgo].
"Said information shall be protected as a trade
secret to the maximum extent practicable.
4
Kilgo moved this Court to strike an affidavit of Caruso's
attached to Bosch's response as Exhibit 12 because, Kilgo
says, that affidavit, dated June 30, 2014, was not before the
trial court when it issued its last order in this case on
April 22, 2014. We instructed the clerk's office to grant the
motion, which it has done. However, the affidavit of Caruso's
that Kilgo relies on above is attached to her mandamus
petition as part of Exhibit D and is a different affidavit,
dated January 22, 2014. The January 22, 2014, affidavit was
referenced, without objection, during a hearing held by the
trial court on February 28, 2014.
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"The information having been designated a trade
secret shall not be shared with any person, firm or
entity outside this litigation.
"The Court in considering measures to limit the
possible harm resulting from disclosure would allow
[Bosch] to submit within 10 days from the date of
this Order a proposed amendment to the Protective
Order entered February 13, 2013[5] containing any
additional safeguards [Bosch] would request."
As allowed by the trial court's March 20, 2014, order,
Bosch filed a motion to amend the trial court's protective
order. Specifically, Bosch sought to amend the protective
order by:
(1) "limit[ing] disclosure of the algorithm code to those
portions of the code that relate to the point in time that a
severe crash has been detected and the decision has been made
to deploy the vehicle's restraints and all algorithm code
thereafter";
(2) "mak[ing] available the calibration parameters that
set forth the deployment of all of the pretensioners and front
airbags when the threshold for deployment is reached";
5
There is no protective order dated February 13, 2013,
attached to any of the filings in this Court. The petition
reveals that, "on September 19, 2012, [Kilgo] and [Bosch]
submitted to [the trial court] a Joint Motion for Protective
Order[,] which [the trial court] subsequently approved and
signed"; the trial court entered that order on September 20,
2012. It appears that the trial court's reference to the
February 13, 2013, protective order was either a clerical
error or a reference to an order that is not before this
Court.
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(3) producing "the portions of the algorithm code and
calibration parameters ... at Bosch's facility in Plymouth,
Michigan";
(4) making "the above portions of the algorithm code and
calibration parameters ... available to [Chris] Caruso on
computer hardware maintained by Bosch";
(5) not allowing Caruso to "copy, image, photograph, or
in any way record any portions of the algorithm and
calibration parameters during his inspection";
(6) requiring Caruso to "explicitly submit in writing to
the personal jurisdiction of the Circuit Court of Etowah
County, Alabama for enforcement of the terms of the Protective
Order prior to any inspection of Bosch's algorithm";
(7) requiring that "Caruso agree in writing that he will
not provide any analysis, discussion, opinions, conclusions,
or communications relating to Bosch's algorithm and
calibration parameters to any individual or entity who is not
'a participant' in this litigation without the express
permission of this Court and without first notifying Bosch and
its counsel in this litigation of his desire to do so and
giving Bosch a reasonable opportunity to respond";
(8) requiring that "Caruso agree in writing that he will
not promote, advertise or discuss the production of the
algorithm and calibration settings, or the fact that the
production was made, to anyone other than a 'participant' in
this litigation"; and
(9) requiring that "all 'work product' that Mr. Caruso
creates following his inspection of Bosch's algorithm and
calibration parameters be confidentially maintained by him and
provided to Bosch's attorneys of record at the conclusion of
this litigation for subsequent destruction."
Kilgo filed a response to Bosch's motion to amend the
protective order, objecting to Bosch's requests to amend the
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protective order numbered (1)-(5) above and also objecting to
what Kilgo interpreted as Bosch's limiting to one the number
of experts Kilgo could employ in analyzing the algorithm;
Kilgo wanted both Caruso and Geoff Mahan, who is described as
an expert in "airbag [and] supplemental restraint," to analyze
the algorithm. The trial court entered an order denying
Bosch's motion to amend the protective order and, in that
order, required Kilgo to "submit a proposed Order including
safeguards it will employ to review the requested discovery";
on April 21, 2014, Kilgo submitted to the trial court a
proposed protective order. On the following day, the trial
court entered an amended protective order, which required
Bosch to produce the entire algorithm for inspection by
Kilgo's two experts, subject to 12 confidentiality and
disclosure safeguards set forth in the order. Bosch
petitioned this Court for a writ of mandamus.
II. Standard of Review
"'In Ex parte Norfolk Southern Ry.,
897 So. 2d 290 (Ala. 2004), this Court
delineated the limited circumstances under
which review of a discovery order is
available by a petition for a writ of
mandamus and the standard for that review
in light of Ex parte Ocwen Federal Bank,
FSB, 872 So. 2d 810 (Ala. 2003):
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"'"'Mandamus is an
extraordinary remedy and will be
granted only when there is "(1) a
clear legal right in the
petitioner to the order sought,
(2) an imperative duty upon the
respondent to perform,
accompanied by a refusal to do
so, (3) the lack of another
adequate remedy, and (4) properly
invoked jurisdiction of the
court." Ex parte Alfab, Inc., 586
So. 2d 889, 891 (Ala. 1991). In
Ex parte Ocwen Federal Bank, FSB,
872 So. 2d 810 (Ala. 2003), this
Court announced that it would no
longer review discovery orders
pursuant to extraordinary writs.
However, we did identify four
circumstances in which a
discovery order may be reviewed
by a petition for a writ of
mandamus. Such circumstances
arise (a) when a privilege is
disregarded, see Ex parte Miltope
Corp., 823 So. 2d 640, 644–45
(Ala. 2001); (b) when a discovery
order compels the production of
patently irrelevant or
duplicative documents the
production of which clearly
constitutes harassment or imposes
a burden on the producing party
far out of proportion to any
benefit received by the
requesting party, see, e.g., Ex
parte Compass Bank, 686 So. 2d
1135, 1138 (Ala. 1996); (c) when
the trial court either imposes
sanctions effectively precluding
a decision on the merits or
denies discovery going to a
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party's entire action or defense
so that, in either event, the
outcome of the case has been all
but determined and the petitioner
would be merely going through the
motions of a trial to obtain an
appeal; or (d) when the trial
court impermissibly prevents the
petitioner from making a record
on the discovery issue so that an
appellate court cannot review the
effect of the trial court's
alleged error. The burden rests
on the petitioner to demonstrate
that its petition presents such
an exceptional case -- that is,
one in which an appeal is not an
adequate remedy. See Ex parte
Consolidated Publ'g Co., 601 So.
2d 423, 426 (Ala. 1992).'"
"'897 So. 2d at 291–92 (quoting Ex parte
Dillard Dep't Stores, Inc., 879 So. 2d
1134, 1136–37 (Ala. 2003)).'"
Ex parte Nationwide Mut. Ins. Co., 990 So. 3d 355, 360 (Ala.
2008) (quoting Ex parte Orkin, Inc., 960 So. 2d 635, 638 (Ala.
2006)). Kilgo does not dispute that the order challenged here
pertains to a trade-secret privilege and thus is reviewable
under category (a) ("a discovery order may be reviewed by a
petition for a writ of mandamus ... when a privilege is
disregarded").
III. Analysis
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Because there is no dispute that the algorithm is a trade
secret, the petition presents only two issues for our review.
First, Bosch argues that the trial court exceeded its
discretion in not issuing a protective order that would
prevent Kilgo from having any access to the algorithm.
Second, Bosch presents the alternative argument that the trial
court exceeded its discretion in refusing to adopt a
protective order drafted by Bosch and instead issuing a
protective order that, Bosch says, provides inadequate
safeguards to protect Bosch's trade secret.
Bosch presents a lengthy argument as to why the algorithm
should not be disclosed to Kilgo, which may be summarized as
follows:
(1) Bosch argues that Kilgo has not shown that the
algorithm is necessary to prove her claims. Instead, Bosch
claims, Kilgo has alleged only a "mere possibility that [the
algorithm] will prove her case." Bosch notes that, in Kilgo's
objection to Bosch's motion to amend the protective order,
Kilgo stated that "'the forward sensors and central sensor
located in this design may well be implicated with respect to
the algorithm and calibration settings.'" This statement,
Bosch says, runs afoul of Ex parte Michelin North America,
Inc., [Ms. 1121330, January 24, 2014] ___ So. 3d ____, ____
(Ala. 2014), insofar as that case states that "'"[n]ecessity"
means that without discovery of the particular trade secret,
the discovering party would be unable to present its case "to
the point that an unjust result is a real, rather than a
merely possible, threat."'" (Quoting Bridgestone Americas
Holding, Inc. v. Mayberry, 878 N.E.2d 189, 196 (Ind. 2007).)
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(2) Bosch argues that the algorithm is an "all-fire"
system that sends a signal to deploy all air bags and seat-
belt pretensioners rather than sending a signal to each air
bag and seat-belt pretensioner; thus, Bosch says, the fact
that some of the air bags and seat-belt pretensioners deployed
shows that the algorithm functioned as designed and that it
was not defective (implicit in this argument is that none of
the air bags or pretensioners would have deployed if the
algorithm were defective). Bosch contends that the front
passenger-side air bag and seat-belt pretensioner did not
deploy because, it says, during the collisions, "four wires to
the passenger side airbag were cut as was the ground wire to
the vehicle's battery," thus "resulting in a disruption of
power and/or signal reference levels."
(3) Bosch argues that the need for disclosure of the
algorithm does not outweigh the harm that would result from
that disclosure. Specifically, Bosch argues that "[Kilgo's]
airbag experts in this case -- both former employees of airbag
system suppliers -- would receive the benefit of years of ECU
scientific and engineering development by Bosch" and that
"[t]here is no quantifiable amount of money that could
compensate Bosch for the loss of revenues, profits, and
competitive advantage it would suffer if the requested
information is disseminated and exploited by Bosch's
competitors."
Bosch argues alternatively that the trial court exceeded
its discretion in refusing to adopt the protective order
drafted by Bosch. Specifically. Bosch argues that
"[its] alternative proposal would give [Kilgo's]
experts access to the portions of the algorithm and
calibrations they claim they need without revealing
the entirety of the trade secrets. It also allows
[Kilgo's] expert access in a controlled environment
where Bosch can ensure that the secrets are
protected, while allowing [Kilgo] the ability to
review additional data showing the 'all fire'
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system. The trial court exceeded its discretion in
not affording Bosch these protections."
Bosch supports the argument portion of the petition with
numerous citations to the affidavits of Kilgo's experts,
Caruso and Mahan, and its own expert, Tom Livernois.
In her response, Kilgo presents argument and evidence
disputing the contentions of error set forth in Bosch's
petition. In response to Bosch's initial argument -- that
Kilgo should have no access to the algorithm -- Kilgo argues:
(1) That Kilgo has shown that the algorithm is necessary
to prove her claims. Specifically, Kilgo notes that one of
her experts, Caruso, stated in his affidavit that "'the
specific algorithm physical principles and the calibration
settings are key factors in determining why the system
incorrectly assessed the total severity of the subject crash
and failed to deploy the passenger airbag, the driver steering
column airbag and the passenger seat pretensioner.'" In
addition, Kilgo argues that the need for disclosure does
outweigh the harm that would result from such disclosure
because, she says, "there is no evidence that [Kilgo's]
attorneys or expert witnesses would violate the strict
protective order," and that, for "independent consulting
engineers" such as Caruso and Mahan, "it is commonplace to
review trade secret information under the limitations of a
protective order." Kilgo further argues that "what is at
issue is the algorithm and calibrations for an ECU in a 2008
model year vehicle. By the time the matter is before [this
Court], the 2015 model year automobiles will be for sale and
the information will be seven years old." Kilgo notes (and it
is undisputed) that there have been "updates" to the algorithm
that existed in the 2008 PT Cruiser.
(2) That "Bosch's arguments are merely an assertion that
[Kilgo] and this Court must simply trust [Bosch] when it says
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that the ECU cannot be defective," without Kilgo's having the
opportunity to verify that the ECU is, in fact, an "all-fire"
system that cannot signal less than all the air bags and seat-
belt pretensioners to deploy. As to Bosch's argument that the
cutting of four wires to the front passenger-side air bag and
the ground wire to the vehicle's battery during the collisions
caused the front passenger-side air bag and seat-belt
pretensioner not to deploy, Kilgo replies:
"The reason the 'electrical system' argument
isn't meaningful can be shown by examining its
parts. First, the cutting of wires running to the
passenger airbag doesn't explain why the passenger
seatbelt pretensioner and the driver's steering
seatbelt pretensioner and the driver's steering
wheel airbag failed to activate -- as they operate
from their own wiring connections. ... Second, those
systems are designed such that the airbag needed to
fire within milliseconds after the crash was sensed
and thus before the wires could be cut in the
impact, or else the ECU was defective by firing too
late, suggesting another defect in the algorithm.
...
"The issue of the severed ground wire from the
battery also does not explain the failure of the
restraint system. These systems are designed to
compensate for such an occurrence by the inclusion
of a reserve energy capacitor within the ECU that
contains enough power to activate all of the
restraint components. ..."
(Bold typeface in original.)
In response to Bosch's second argument -- that Kilgo may
be entitled to some of, but not all, the algorithm -- Kilgo
argues that the proposed protective order drafted by Bosch
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"excludes the most relevant and most needed information."
Specifically, Kilgo argues that
"[t]he information that Bosch offers to provide
fails to include the algorithm and calibrations
regarding the actual 'crash discrimination
thresholds.' ... Chris Caruso explained by affidavit
that the 'crash sensing algorithm and/or
calibrations' were needed. ... He testified that the
most probable failure was a design of the crash
sensing algorithm[] and that 'the specific algorithm
physical principles and calibration settings for the
crash determination thresholds are key factors in
determining the [sic] why the system incorrectly
assessed the total severity of the subject crash.'
... The data Bosch would agree to provide, beginning
at the point in time when the 'all-fire' command was
sent, omits this key information."
Having considered the compelling and well supported
arguments presented by both Bosch and Kilgo, we agree with
Bosch insofar as it argues that the trial court exceeded its
discretion by entering a protective order that provides
insufficient protection for the algorithm, which, as noted, is
undisputedly a trade secret. Therefore, the petition is due
to be granted to that extent. See Ex parte W.L. Halsey
Grocery Co., 897 So. 2d 1028, 1035 (Ala. 2004) ("Because [the
petitioner] has shown that it has a clear legal right to the
relief sought, we grant the petition and order the trial court
to protect [the petitioner's] trade-secret information to the
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maximum extent practicable, striking a fair and reasonable
balance between [the petitioner's] legitimate interest in
confidentiality and the defendants' equally legitimate
interest in defending the claims against them with the benefit
of discovery.").
IV. Conclusion
We grant Bosch's petition and direct the trial court to
vacate its protective order and to enter a more comprehensive
and restrictive protective order with regard to the algorithm.
See Ex parte W.L. Halsey Grocery Co., supra. This opinion,
however, is not to be read as directing the trial court to
enter the proposed protective order previously offered by
Bosch as the governing protective order in this case.
PETITION GRANTED; WRIT ISSUED.
Stuart, Bolin, Parker, and Wise, JJ., concur.
Murdock, Shaw, and Bryan, JJ., concur in the result.
Moore, C.J., dissents.
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SHAW, Justice (concurring in the result).
I agree with the implicit holding in the main opinion
rejecting the arguments of Robert Bosch LLC that Dorothy
Kilgo's discovery of the algorithm Bosch claims as a trade
secret is not "necessary" in Kilgo's case and that the need
for disclosure of the algorithm does not outweigh the
potential harm to Bosch from its disclosure. I further agree
that the protective order entered by the trial court was
insufficient to protect Bosch's trade secrets. See Rule 507,
Ala. R. Evid. ("If disclosure is directed, the court shall
take such protective measures as the interests of the holder
of the privilege and of the parties and the interests of
justice require.").
I believe that the amendments to the protective order
requested by Bosch were appropriate in this case, except to
the following extent:
(1) The trial court should consider allowing more
than a single expert, Chris Caruso, to review the
algorithm information. However, it should be made
clear that the broad category of "qualified persons"
set forth in the April 22, 2014, protective order,
is not entitled to review that information.
(2) The algorithm information that Bosch offered to
provide should include information identified in
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Caruso's affidavit as "crash discrimination
thresholds."
Although I have some concerns that Bosch's proposed
limitations on the ability of Kilgo's experts to copy or
otherwise record the algorithm may hamper their ability to
effectively examine the materials, the trial court could, if
possible, craft a solution that would allow the experts to
retain the minimum amount of information required to
adequately examine this information.
Murdock and Bryan, JJ., concur.
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MOORE, Chief Justice (dissenting).
"The utilization of a writ of mandamus to compel or
prohibit discovery is restricted because of the discretionary
nature of a discovery order. The right sought to be enforced
by mandamus must be clear and certain with no reasonable basis
for controversy about the right to relief." Ex parte Dorsey
Trailers, Inc., 397 So. 2d 98, 102 (Ala. 1981). In this case,
the trial court crafted a protective order that allowed
Dorothy Kilgo to obtain the information she needed, subject to
12 confidentiality safeguards that were designed to protect
Robert Bosch LLC ("Bosch"). Consequently, I cannot say that
Bosch had a "clear and certain right" to even more protection
or that there is "no reasonable basis for controversy about
the right to relief." Dorsey Trailers, 397 So. 2d at 102. I
continue to maintain the position that mandamus is improper
for discovery matters except in the most extreme of
circumstances. See, e.g., Ex parte Mobile Serv. Gas Corp., 123
So. 3d 499, 516 (Moore, C.J., dissenting); Ex parte Ocwen
Fed. Bank, FSB, 872 So. 2d 810, 817 (Ala. 2003) (Moore, C.J.,
concurring in the result). Therefore, I respectfully dissent.
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