St. Jude Medical S.C., Inc. v. Janssen-Counotte, 305 F.R.D. 630

Background

St. Jude Medical S.C., Inc. sued its former European executive, Janssen, alleging theft and threatened misappropriation of trade secrets after forensic review suggested she copied confidential materials before joining competitor Biotronik, Inc. in the U.S.
Judge Sparks in the underlying Texas case found St. Jude stated plausible claims but had not shown a likelihood of success for a preliminary injunction and questioned which specific trade secrets were at issue.
St. Jude served a Rule 45 subpoena on Biotronik, Inc. (U.S. affiliate) seeking broad documents and ESI covering communications about Janssen, strategic and sales plans, customer data, and inspection of devices and removable media.
Biotronik, Inc. resisted production, arguing (1) it does not control documents held by European affiliates, (2) St. Jude must first identify its trade secrets with greater particularity before discovery, (3) it already produced all responsive materials after a reasonable search, and (4) many requests are overbroad or unduly burdensome.
The court evaluated (a) when a domestic corporate entity must search affiliates’ records abroad (control), (b) whether a plaintiff must identify trade secrets before conducting discovery, and (c) the need for a special master to resolve remaining ESI and discovery disputes.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Biotronik, Inc. must produce documents held by European affiliates	St. Jude: Biotronik’s European executives negotiated Janssen’s hire for the U.S. entity, acting as agents; U.S. affiliate effectively controls affiliate records and must search them	Biotronik: European affiliates are distinct legal entities; Biotronik, Inc. lacks possession, custody, or control over their records	Court: Control is fact-specific; sufficient indicia (agency/close coordination re: Janssen hire) justify requiring the Biotronik group to conduct a reasonable, diligent search for responsive documents and ESI
Whether St. Jude must identify alleged trade secrets with particularity before third-party discovery	St. Jude: broad discovery needed to learn what was misappropriated; premature identification may be impossible and creates a "Catch-22"	Biotronik: courts commonly require pre-discovery identification of trade secrets to limit disclosures	Court: Declined to require further pre-discovery particularization here — plaintiff may proceed with discovery because of its need to learn what was taken and protective orders can limit disclosure
Whether a special master should be appointed to resolve detailed ESI/discovery disputes	St. Jude: agreed to appointment to achieve efficient, informed resolution	Biotronik: proposed that a special master would be appropriate	Court: Appointed a special master under Fed. R. Civ. P. 53 to address remaining technical, ESI, and scope disputes to avoid delay and to manage complex, fact-specific issues
Whether Biotronik, Inc.’s search was adequate	St. Jude: Biotronik produced little (redacted contract, passport pages); its proposed search parameters/custodians are insufficient	Biotronik: identified search terms and custodians and contends it produced all it has	Held: Court did not accept the sufficiency of Biotronik’s search at this stage and delegated resolution of search scope and adequacy to the special master

Key Cases Cited

In re Citric Acid Litig., 191 F.3d 1090 (9th Cir.) (control for subpoena requires legal right to obtain documents)
In re Bankers Trust Co., 61 F.3d 465 (6th Cir.) (possession not required; control suffices for production)
United States v. Faltico, 586 F.2d 1267 (8th Cir.) (effective control of subsidiary/affiliate can require production)
Mount Hope Church v. Bash Back!, 705 F.3d 418 (9th Cir.) (undue burden standards apply equally to nonparty subpoenas)
Dart Indus. Co. v. Westwood Chem. Co., 649 F.2d 646 (9th Cir.) (nonparty discovery may be subjected to broader protections to avoid harassment)