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May 30, 1996

LEE SHUKNECHT & SONS, INC., Petitioner, -vs- P. VIGNERI & SONS, INC., Respondent.

The opinion of the court was delivered by: CURTIN

 CURTIN, District Judge

 Currently before the court is a motion by petitioner Lee Shuknecht and Sons, Inc. ("Shuknecht"), for a order requiring respondent P. Vigneri & Sons, Inc. ("Vigneri"), to show cause why a protective order issued by this court on October 3, 1995, Item 5, should not be rescinded. Item 11. Vigneri has submitted responding papers, Items 14-16, and Shuknecht has filed a reply brief, Item 17.


 Shuknecht is New York corporation, in the business of manufacturing and selling commercial onion harvesters. Its place of business is at 4458 Ford Road, Elba, New York. It is the owner of U.S. Patents 5,024,278 ("the '278 patent"), 5,376,046 ("the '046 patent"), and 5,431,000 ("the '000 patent"), which cover certain features of onion harvester construction and operation. Vigneri is also a New York corporation, with its principal place of business at 5929 Oak Orchard Road, Elba, New York.

 At the conclusion of the 1994 onion harvest, Vigneri decided to build a new onion harvester for operation during the 1995 harvest season. Item 16, P 2. Design and construction of the new harvester began in January, 1995, and ended in September, 1995. Id., P 3. The cost was more than $ 110,000. Id., P 18. Vigneri maintains that the harvester offers significant improvements over known harvesting equipment, including Shuknecht harvesters. Id., P 12. "One improvement is the ability of the Vigneri harvester to operate in conditions of light rain and dew, previously thought impossible for an onion harvester." Id.

 In order to protect what it claims are trade secrets, which would have been visible upon external inspection during the construction stage but not after completion, Vigneri built the new harvester at a small building owned by the company, in Elba. Item 16, PP 4-5. The doors to the building were kept locked, and the windows boarded over, to prevent observation. Id., P 5. The company took other steps to preserve confidentiality. Id., PP 6-10, 13. The harvester was completed on September 1, 1995, and moved to Vigneri's main place of business at 5929 Oak Orchard Road, Elba. Id., P 11. It has been kept there, in a locked building, since that time, except during its operation in the 1995 harvest season. Id., P 13. During the harvest, it was operated solely by a Vigneri employee, Philip Vigneri, Jr., on Vigneri land. Id., PP 13-14.

 On September 8, 1995, LuKacher wrote again to Vigneri, stating that he understood that Vigneri had completed an onion harvester that might be covered by one or more claims of the '278 and '046 patents. Item 1, Ex. C. He requested that Vigneri permit him to inspect the machine, within the following week. The inspection would be at the Vigneri premises, and would take about one half hour. If Vigneri did not permit the inspection, LuKacher would "be justified in inferring that the Shuknecht patents are being infringed," and would take legal action. Id.

 Four days later, on September 12, 1995, Vigneri responded through its attorney, David Teske. Item 1, Ex. D. Teske informed LuKacher that the Vigneri harvester was not available for inspection, due to the demands of the current harvest season. Id. at 1. He explained in detail why he believed that it did not infringe any claim of the '278 or '046 patents, and indicated that since there was no infringement, he would consider the matter closed. Id. at 1-3.

 LuKacher persisted. On September 14, 1995, he wrote to Teske again, asking to be allowed to inspect the Vigneri machine on Friday September 15, at 9:00 a.m., before harvesting of the onion crop would begin for that day. Item 1, Ex. E. Such an inspection would help to "clear the air." Id. LuKacher attached to his letter a copy of the '000 patent, which had been issued on July 11, 1995. However, he made no claim that Shuknecht had any reason to believe that the Vigneri machine infringed any of the claims of that patent. Id.

 Teske responded on the same day, indicating that Vigneri would grant the request for inspection when the harvesting season ended, by early October at the latest. Item 1, Ex. F. Any inspection would have to be "under an 'attorney's-eyes-only' Confidential Disclosure Agreement as the harvester includes trade secrets of P. Vigneri & Sons." Id.

 In the next few days, further correspondence between LuKacher and Teske established that although an accommodation might be reached over the question of confidentiality, there would be no agreement allowing for an immediate inspection. Item 1, Exs. G-I; Item 15, Ex. G; see also, Item 6.

 On September 21, 1995, Shuknecht filed its petition in this proceeding, under Fed. R. Civ. P. 27(a), seeking, inter alia, an order requiring Vigneri to allow inspection of its harvester by Shuknecht. Items 1-3. It asserted that it was a prospective plaintiff in an action to enforce the '278, '046, and '000 patents against Vigneri, but had been precluded by Vigneri's actions from obtaining sufficient evidence to support the filing of an infringement claim. Item 1.

 In a letter dated October 2, 1995, Vigneri informed the court that it remained willing to allow an inspection at a convenient time after the conclusion of the harvest, if the court were to issue a protective order to safeguard Vigneri's trade secrets. Item 6, p. 2. Accordingly, on October 3, 1995, the court issued an order under which Shuknecht's attorney, LuKacher, would be allowed to conduct a visual inspection of the Vigneri harvester, on October 10, 1995, for the purpose of confirming the absence of patent infringement. Items, pp. 1-2. Under the terms of the order, LuKacher was to maintain the confidentiality of, and not provide to anyone, including Shuknecht, any information concerning or relating to the Vigneri harvester obtained ...

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