                                                                                 FILED
                                                                             Apr 15 2019, 9:07 am

                                                                                 CLERK
                                                                             Indiana Supreme Court
                                                                                Court of Appeals
                                                                                  and Tax Court




ATTORNEYS FOR APPELLANTS                                    ATTORNEYS FOR APPELLEES
Damon R. Leichty                                            Joshua B. Fleming
Barnes & Thornburg LLP                                      Lucy R. Dollens
South Bend, Indiana                                         Quarles & Brady LLP
                                                            Indianapolis, Indiana
Gerald E. Burns
Buchanan Ingersoll & Rooney, PC
Philadelphia, Pennsylvania



                                             IN THE

     COURT OF APPEALS OF INDIANA

Heraeus Medical, LLC, a                                     April 15, 2019
Delaware Limited Liability                                  Court of Appeals Case No.
Company; Devin Childers, an                                 18A-PL-1823
individual; Robert Kolbe, an                                Interlocutory Appeal from the
individual; James “Worth”                                   Kosciusko Superior Court
Burns, an individual; Paul Cruz,                            The Hon. David C. Cates, Judge
an individual; and Kyle Kolbe,
                                                            Trial Court Cause No.
an individual,                                              43D01-1802-PL-21
Appellants-Defendants,

        v.

Zimmer, Inc., a Delaware
corporation d/b/a Zimmer
Biomet, and Zimmer US, Inc., a
Delaware corporation,
Appellees-Plaintiffs.


Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019                                   Page 1 of 21
      Bradford, Judge.


                                            Case Summary
[1]   Beginning in 2012, Heraeus Medical GmbH and Zimmer Surgical, Inc., had an

      agreement pursuant to which Zimmer Surgical had exclusive United States

      distribution rights to certain bone cements manufactured by Heraeus Medical

      GmbH and sold under the brand name Palacos (“the Distribution Agreement”).

      Zimmer Surgical is a subsidiary of Zimmer, Inc., d/b/a as Zimmer Biomet. In

      late 2017, Robert Kolbe was an employee of Zimmer Biomet and had signed an

      agreement containing non-compete and non-solicitation of Zimmer Biomet

      customers and employees covenants (“the Kolbe Agreement”). In January of

      2018, Heraeus Medical GmbH exercised its right to terminate the Distribution

      Agreement as of December 2018. Soon thereafter, Heraeus Medical GmbH

      announced that it had established a new direct sales force for Palacos through

      its newly-established American affiliate, Heraeus Medical, Inc. (“Heraeus”),

      which included Kolbe, who had left Zimmer Biomet in November of 2017.

[2]   In February of 2018, Zimmer Biomet and Zimmer US, Inc. (collectively,

      “Zimmer”), sued, inter alia, Heraeus and Kolbe on various grounds, also

      seeking a preliminary injunction enforcing the Kolbe Agreement and the

      restrictive covenants signed by the other individual defendants. On July 12,

      2018, the trial court issued a preliminary injunction in which it ordered Kolbe

      to generally abide by the terms of the Kolbe Agreement and ordered Heraeus to

      not possess, use, or disclose confidential information received from Heraeus

      GmbH or employ or engage the individual defendants in a way that violated
      Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019      Page 2 of 21
      their restrictive covenants with Zimmer Biomet or the trial court’s preliminary

      injunction. Heraeus, Kolbe, and four other individual defendants

      (“Appellants”) appeal, contending that the Kolbe Agreement is contrary to law

      and unenforceable, the trial court misapplied certain provisions of the Kolbe

      Agreement, and portions of the preliminary injunction related to Heraeus are

      unreasonable.1 While we largely disagree with Appellants’ arguments, we do

      agree that the Kolbe Agreement’s covenant not to solicit Zimmer Biomet

      employees is overbroad and so reform it to comply with Indiana law. We also

      agree that in crafting its preliminary injunction, the trial court (1) incorrectly

      defined the geographic scope of the Kolbe Agreement and (2) applied the term

      “contact” in a way inconsistent with the Kolbe Agreement. We affirm in part,

      reverse in part, and remand with further instructions.


                              Facts and Procedural History
[3]   As of January 1, 2012, Zimmer Surgical and Heraeus Medical GmbH were

      parties to the Distribution Agreement, pursuant to which Zimmer Surgical was

      granted an exclusive license to distribute, market, promote, and sell certain

      bone cements manufactured by Heraeus Medical GmbH, all sold under the




      1
        The trial court’s order also enjoined former Zimmer Biomet employees Devin Childers and James “Worth”
      Burns from violating the terms of their restrictive covenants. However, Appellants do not challenge the
      preliminary injunction as it relates to Childers, and Burns is no longer working for Heraeus, rendering
      Appellants’ claims related to him moot. “[W]hen we are unable to provide effective relief upon an issue, the
      issue is deemed moot, and we will not reverse the trial court’s determination ‘where absolutely no change in
      the status quo will result.’” Jones v. State, 847 N.E.2d 190, 200 (Ind. Ct. App. 2006) (citation omitted), trans.
      denied. If Appellants were to prevail on any, or even all, of their claims related to Burns, nothing would
      change, so we will not address them.

      Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019                                  Page 3 of 21
      name Palacos. Zimmer has also developed its own line of competing bone

      cement. The initial term of the Distribution Agreement was to end on

      December 31, 2018, subject to possible extension. Beginning on January 1,

      2018, each party had the right to elect to make the Distribution Agreement non-

      exclusive for the final year, which Heraeus Medical GmbH did on January 3.

      By this time, Heraeus Medical GmbH had established a direct sales force to sell

      Palacos in the United States through its newly-organized affiliate Heraeus. As

      it happened, several former Zimmer Biomet employees had recently left to take

      sales positions at Heraeus, including Devin Childers, Kolbe, James “Worth”

      Burns, Paul Cruz, and Kyle Kolbe (“K. Kolbe”).

[4]   Kolbe was hired by Heraeus in November of 2017, currently serves as vice-

      president of sales, and was previously employed by Zimmer Biomet as Group

      Director for Enterprise Solutions for the East. Kolbe signed the Kolbe

      Agreement on September 30, 2015, which contains a covenant not to compete

      and covenants not to solicit Zimmer Biomet customers or employees. The

      covenant not to solicit customers or active prospects provides, in part, that

      “[e]mployee will not, directly or indirectly, (i) provide, sell or market; (ii) assist

      in the provision, selling or marketing of; or (iii) attempt to provide, sell or

      market any Competing Products to any of Company’s Customers or Active

      Prospects in the Restricted Territory.” Appellants’ App. Vol. IV p. 153.

[5]   The Kolbe Agreement defines “Active Prospect” as

              [a]ny person or entity that Company, through its representatives,
              specifically marketed to and/or held discussions with regarding
              the sale of any of Company’s products or services at any time
      Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019           Page 4 of 21
              during the last six (6) months of Employee’s employment with
              Company and with respect to whom, at any time during the six (6)
              months immediately preceding the termination of Employee’s
              employment with Company, Employee had (i) any marketing or
              sales contact on behalf of Company and/or ii) access to, or gained
              knowledge of, any Confidential Information concerning
              Company’s business prospects with such Active Prospect.
      Appellants’ App. Vol. IV p. 152.

[6]   The Kolbe Agreement’s covenant not to solicit Zimmer Biomet employees

      provides as follows:

              Employee will not employ, solicit for employment, or advise any
              other person or entity to employ or solicit for employment, any
              individual employed by Company at the time of Employee’s
              separation from Company employment, or otherwise induce or
              entice any such employee to leave his/her employment with
              Company to work for, consult with, provide services to, or lend
              assistance to any Competing Organization.
      Appellants’ App. Vol. IV p. 153. All covenants have terms of eighteen months

      after Kolbe left Zimmer Biomet, to be extended in cases of noncompliance.

      Moreover, the Kolbe Agreement contains the following provision: “The parties

      agree that any court interpreting the provisions of this Agreement shall have the

      authority, if necessary, to reform any such provision to make it enforceable

      under applicable law.” Appellants’ App. Vol. IV p. 156.

[7]   On February 23, 2018, Zimmer sued Heraeus, Childers, Kolbe, Burns, Cruz,

      and K. Kolbe for (1) breach of contract against the individual defendants; (2)

      tortious interference with contracts against Heraeus; and (3) and tortious

      interference with business relationships, civil conspiracy, and unfair


      Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019       Page 5 of 21
      competition against all defendants. Zimmer also sought a preliminary

      injunction to stop violations of the confidentiality, non-compete, and non-

      solicitation agreements signed by the various individual defendants. On April

      17 and 18 and May 22, 2018, the trial court heard evidence relevant to

      Zimmer’s motion for a preliminary injunction. Prior to the hearing, Zimmer

      withdrew its request as to K. Kolbe, and, on May 31, 2018, the trial court

      issued an agreed injunction order as to Cruz.

[8]   On July 12, 2018, the trial court denied Zimmer’s motion for preliminary

      injunction in part and granted it in part. The trial court, in part, ordered Kolbe

      enjoined from

              b.       Directly or indirectly working or lending assistance to
                       Heraeus, its sales managers, employees, or independently
                       contracted distributors or sales representatives, for the sale
                       and promotion of Heraeus’ products and services in the
                       Eastern half of the U.S. (the territory assigned to him in his
                       last position with Zimmer Biomet), which includes:
                       Alabama, Arkansas, Connecticut, Delaware, Florida,
                       Georgia, Indiana, Kentucky, Maine, Maryland,
                       Massachusetts, Michigan, Mississippi, New Hampshire,
                       New Jersey, New York, North Carolina, Ohio,
                       Pennsylvania, Rhode Island, South Carolina, Tennessee,
                       Vermont, Virginia, Washington D.C., West Virginia;
              c.       Providing, selling or marketing to, or contacting any of
                       Zimmer Biomet’s Customers to whom Kolbe sold during
                       his last two years or to Zimmer Biomet’s Active Prospects to
                       whom Kolbe marketed Zimmer Biomet products in his last
                       six months of employment;
              d.       Urging, inducing or seeking to induce any distributor or
                       sales representative with whom Zimmer Biomet had a

      Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019           Page 6 of 21
                        business relationship at the time of Robert Kolbe’s
                        resignation on November 3, 2017, to terminate its or their
                        relationship with, or representation of, Zimmer Biomet or
                        to cancel, withdraw, reduce, limit or in any manner modify
                        any such person’s or entity’s business with, or
                        representation of, Zimmer Biomet;
               e.       Employing or soliciting for employment, or advising
                        Heraeus to employ or solicit for employment any individual
                        employed by Zimmer Biomet as of November 3, 2017, or
                        otherwise directly or indirectly induce or entice any such
                        employee to leave his/her employment with Zimmer
                        Biomet to work for, consult with, provide services to, or
                        lend assistance to Heraeus.
       Appellants’ App. Vol. II pp. 58–59.

[9]    The trial court, in part, preliminarily enjoined Heraeus as follows:

               a.       Heraeus shall not possess, use or disclose any Zimmer
                        Biomet Confidential Information received from the
                        Individual Defendants, any other Zimmer Biomet employee
                        or sales representative, or from Zimmer Biomet through its
                        parent, Heraeus Medical GmbH.
               b.       Heraeus shall not employ or engage the Individual
                        Defendants in any capacity that violates their respective
                        Agreements or this Order for 18 months from the entry of
                        this Preliminary Injunction.
       Appellants’ App. Vol. II p. 60.


                                   Discussion and Decision
[10]   Appellants advance several challenges to the trial court’s preliminary

       injunction. “The grant or denial of a preliminary injunction rests within the

       sound discretion of the trial court, and our review is limited to whether there


       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019           Page 7 of 21
       was a clear abuse of that discretion.” Ind. Family & Soc. Servs. Admin. v.

       Walgreen Co., 769 N.E.2d 158, 161 (Ind. 2002) (citing Harvest Ins. Agency, Inc. v.

       Inter-Ocean Ins. Co., 492 N.E.2d 686, 688 (Ind. 1986)).

               In order to obtain injunctive relief, appellee had the burden of
               showing that: 1) its remedies at law were inadequate, thus causing
               irreparable harm pending resolution of the substantive action; 2) it
               had at least a reasonable likelihood of success at trial by
               establishing a prima facie case; 3) its threatened injury outweighed
               the potential harm to appellant resulting from the granting of an
               injunction; and 4) the public interest would not be disserved.
       Harvest Ins. Agency, 492 N.E.2d at 688. “If the movant fails to prove any of

       these requirements, the trial court’s grant of an injunction is an abuse of

       discretion.” Ind. Family & Soc. Servs. Admin., 769 N.E.2d at 161.

                                      I. Restrictive Covenants
[11]   Appellants make several claims related to the restrictive covenants entered into

       by Kolbe when he was employed by Zimmer Biomet. Specifically, Appellants

       claim that some of the provisions of the Kolbe Agreement are unenforceable

       and that the trial court abused its discretion by applying other provisions in

       such a way as to exceed the actual scope of the covenants. We take these

       claims as claims that the trial court abused its discretion in concluding that

       Zimmer established a prima facie case.

                  A. Whether Certain Provisions of the Covenants
                       Are Overbroad as a Matter of Law
[12]   Appellants contend that certain provisions of the Kolbe Agreement are

       overbroad as a matter of law. It is well-established that

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019           Page 8 of 21
               Indiana courts disfavor covenants which restrict a person’s liberty
               of action in his business or trade. Eaton Corporation v. Appliance
               Valves Corporation, 526 F. Supp. 1172, 1182 (N.D. Ind. 1981).
               Accordingly, Indiana courts will not hesitate to strike down any
               such restrictive covenants which are the least bit overly broad with
               respect to the “protectible interest” at stake. Slisz v. Munzenreider
               Corporation, 411 N.E.2d 700, 705 (Ind. Ct. App. 1980). Where the
               underlying protectible interest is minimal, courts will closely
               scrutinize the terms of the restraint. Id. The burden is on the party
               seeking to enforce the covenant to demonstrate that the injunction
               is necessary to protect a legitimate business interest. Smart
               Corporation v. Grider, 650 N.E.2d 80, 83 (Ind. Ct. App. 1995)
               (Former employer is not entitled to the enforcement of a restrictive
               covenant unless he can show that the former employee gained a
               unique competitive advantage or ability to harm the employer
               during their relationship), trans. denied.
       Wagler Excavating Corp. v. McKibben Const., Inc., 679 N.E.2d 155, 157–58 (Ind.

       Ct. App. 1997), trans. denied. “In order to be enforceable, the provisions of a

       covenant not to compete must be reasonable, which is a question of law.”

       Coates v. Heat Wagons, Inc., 942 N.E.2d 905, 913 (Ind. Ct. App. 2011). “To be

       reasonable, an agreement containing such a covenant must protect legitimate

       interests of the employer, and the restrictions established by the agreement must

       be reasonable in scope as to time, activity, and geographic area.” Id.

                                               1. Geographic Scope
[13]   Appellants contend that the Kolbe Agreement is void because it does not

       contain a clearly-defined territory. “Restricted Territory” is defined in the

       Kolbe Agreement as:

               (i) any Customer-specific or geographic territory assigned to, or
               covered by, Employee during Employee’s last two (2) years of

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019          Page 9 of 21
               employment with Company; (ii) any state or portion of any state
               assigned to Employee by Company for purposes of any sales or
               service activities or responsibilities at any time during the two (2)
               years preceding the termination of Employee’s employment with
               Company; or (iii) any county, municipality or parish of any state
               or commonwealth assigned to Employee or in which Employee
               engaged in any sales or service activities on behalf of Company at
               any time during the two (2) years preceding termination of
               Employee’s employment with Company.
       Appellants’ App. Vol. IV p. 152.

[14]   Appellants first argue that a restrictive employment covenant without a defined

       geographic scope is not enforceable in Indiana. Indiana law, however, requires

       only that the geographic scope of restrictive employment covenant be

       reasonable, not that it be spelled out in explicit terms. See Coates, 942 N.E.2d at

       915. Appellants’ argument that the Kolbe Agreement is void because it did not

       include an explicit geographic scope is not supported by Indiana law. See also

       Zimmer US, Inc. v. Mire, 188 F. Supp. 3d 843, 849–50 (N.D. Ind. 2016) (“So the

       issue before the court […] is this: does the fact that the Agreement is silent on

       the issue of an assigned restricted geographic area automatically nullify the

       restrictive covenants? The answer to that question is no.”).

[15]   Moreover, Indiana law also provides that if the trial court cannot determine the

       reasonableness of that scope solely from the covenant document, it may

       consider extrinsic evidence in the preliminary injunction hearing. See id.

       (considering stipulated facts submitted to determine geographic scope of

       covenant). As for that evidence in this case, Kolbe conceded that the map

       admitted as Plaintiff’s Exhibit 129 accurately reflected his territory while at

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019         Page 10 of 21
       Zimmer Biomet. Exhibit 129 indicates that Alabama, Arkansas, Connecticut,

       Delaware, Florida, Georgia, Indiana, Kentucky, Maine, Maryland,

       Massachusetts, most of Michigan, Mississippi, New Hampshire, New Jersey,

       New York, North Carolina, Ohio, Pennsylvania, Rhode Island, South

       Carolina, Tennessee, Vermont, Virginia, Washington D.C., and West Virginia

       comprised Kolbe’s territory while at Zimmer Biomet.

[16]   Appellants argue that the map that is Exhibit 129 is not accurate enough to

       determine precisely which territories are included in the East region. For the

       most part, we disagree. The vast majority of the border between the East and

       West regions is obviously defined by the borders between various states.

       Appellants are correct, however, that Exhibit 129 indicates that not all of

       Michigan is in the East and so was not included in Kolbe’s territory at Zimmer

       Biomet. Specifically, it appears that a large portion of the Upper Peninsula of

       Michigan is, in fact, included in the West region. We remand with instructions

       to clarify which portions of Michigan are assigned to the East region and which

       are in the West.2

                               2. Non-Solicitation of Customers Covenant
[17]   Appellants contend that the non-solicitation covenant in the Kolbe Agreement

       is overbroad because it allegedly prohibits him from soliciting every Zimmer

       Biomet customer in the United States, not just customers in Kolbe’s old




       2
        It appears that portions of Northwestern Arkansas and Southern Mississippi have also been assigned to the
       West region. Appellants, however, have made no claim regarding these areas.

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019                           Page 11 of 21
       territory. This argument, however, is premised on a mischaracterization of the

       terms of the covenant. The language in question, far from enjoining Kolbe

       from attempting to solicit business from any of Zimmer Biomet’s customers,

       clearly applies only to customers in the restricted territory, or Kolbe’s old

       territory. Appellants’ App. Vol. II p. 59. While it is true that the term

       “Customer” as defined in the Kolbe Agreement is quite broad, the covenant

       plainly limits its scope to customers in Kolbe’s old territory.

[18]   Appellants also contend that the order not to solicit “Zimmer Biomet’s Active

       Prospects to whom Kolbe marketed Zimmer Biomet products in his last six

       months of employment” cannot be enforced because covenants not to solicit

       prospective customers are unenforceable under Indiana law. Appellants’ App.

       Vol. II p. 59. The cases on which Appellants rely, however, do not stand for

       such a broad proposition. In Seach v. Richards, Dieterle & Co., 439 N.E.2d 208

       (Ind. Ct. App. 1982), the problem with the covenant was its length, not that it

       concerned prospective customers. In invalidating the covenant at issue in that

       case, the Seach court stated its reasoning as follows: “The contract prohibits

       contact with all past or prospective customers of the Firm, no matter how much

       time has elapsed since their patronage ceased or the contact was made. This restraint is

       vague and too broad.” Id. at 214 (emphasis added). Indeed, not only did the

       Seach court not state that an interest in prospective customers cannot ever be

       protectable, it explicitly stated that it was not “decid[ing] whether a solitary

       ‘contact’ with a prospective customer is sufficient to bestow upon the employer

       a protectable interest.” Id. at 214 n.5. In Clark’s Sales & Service, Inc. v. Smith, 4

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019            Page 12 of 21
       N.E.3d 772 (Ind. Ct. App. 2014), trans. denied, the court invalidated as

       overbroad a covenant that prohibited Smith from soliciting “anyone who was a

       customer of Clark’s during the term of Smith’s employment[,]” which

       happened to be fourteen years. Id. at 781. As in Seach, the basis of our ruling

       was the covenant’s length: “[W]e agree with the trial court’s conclusion that

       Clark’s attempt to protect a customer base spanning the entire term of Smith’s

       employment is overly broad and unreasonable.” Id. at 782. Indeed,

       prospective customers were not even included in the non-solicitation covenant

       at issue in Clark’s. In the absence of any Indiana authority that prospective

       customers cannot ever be a protectable interest, we decline to issue so broad a

       holding.

[19]   None of this means, of course, that a covenant preventing the solicitation of

       active prospects is necessarily valid, as it must still be reasonable. We conclude

       that, under the circumstances of this case, the covenant regarding active

       prospects is reasonable. As mentioned, “Active Prospects” are defined in the

       Kolbe Agreement as a person or entity “specifically marketed to and/or held

       discussions with regarding the sale of any of Company’s products or services at

       any time during the last six (6) months of Employee’s employment with

       Company[.]” Appellants’ App. Vol. IV p. 152.

[20]   First, it is important to note that the covenant only restricts contact with active

       prospects, i.e., those Kolbe had already contacted and/or with whom he had

       already communicated, not all potential customers. In our view, this

       distinction is significant. While it might be unreasonable to prohibit any

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019         Page 13 of 21
       contact with potential customers altogether, it does seem to us that it would be

       unfair for Heraeus to be able to finish building upon a foundation laid by Kolbe

       when he worked for Zimmer Biomet. Because the covenant in the Kolbe

       Agreement is limited to those with whom Kolbe already had some sort of

       association, it is far less broad than a covenant prohibiting solicitation of all

       potential customers.

[21]   A second point worth noting is that the covenant at issue here is also of quite

       limited duration, applying only to the active contacts generated in the six

       months before Kolbe left Zimmer Biomet. This six-month look-back period is a

       far cry from the unlimited period in Seach. Because the non-solicitation

       covenant of the Kolbe Agreement is limited in both scope and duration, we

       cannot say that Appellants have established a likelihood of success on the

       merits.

                    3. Non-Solicitation of Zimmer Biomet Employees Covenant
[22]   The Kolbe Agreement contains a covenant not to solicit Zimmer Biomet

       employees to work for Heraeus, with employees defined as all persons who

       were employees at the time of Kolbe’s separation from the company.

       Appellants contend that such covenants are overbroad and violate Indiana law.

       There is, as Appellants acknowledge, no Indiana authority to support this

       proposition. Appellants urge us, however, to adopt the Wisconsin Supreme

       Court’s reasoning in Manitowoc Co., Inc. v. Lanning, 906 N.W.2d 130 (Wis.

       2018), a recent decision invalidating a similar covenant.



       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019         Page 14 of 21
[23]   We decline Appellants’ invitation. Not only is Manitowoc not binding in

       Indiana, we are not persuaded by its approach. The Manitowoc court’s decision

       was informed by a Wisconsin statute that has no Indiana counterpart and

       provides as follows:

               A covenant by an assistant, servant or agent not to compete with
               his or her employer or principal during the term of the
               employment or agency, or after the termination of that
               employment or agency, within a specified territory and during a
               specified time is lawful and enforceable only if the restrictions
               imposed are reasonably necessary for the protection of the
               employer or principal. Any covenant, described in this section,
               imposing an unreasonable restraint is illegal, void and
               unenforceable even as to any part of the covenant or performance
               that would be a reasonable restraint.
       Wis. Stat. § 103.465. While section 103.465 does not, on its face, seem

       significantly different from Indiana law on the topic, suffice it to say that we

       largely agree with the dissent’s assessment of the majority opinion in Manitowoc:

       “The lead opinion distorts the plain meaning of Wis. Stat. § 103.465, thereby

       changing it from a statute that balanced the rights of employees and their

       employers into a broad mandate that prevents employers from protecting their

       businesses from third-party raiding.” Manitowoc, 906 N.W.2d at 151

       (Roggensack, C.J., dissenting).

[24]   We think that it almost does not need to be stated that Zimmer Biomet has a

       legitimate interest in not having its valuable employees poached by a direct

       competitor through the efforts of former employees now working for that

       competitor. This interest, of course, must be balanced against the interests of


       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019        Page 15 of 21
       Kolbe and Heraeus in being able to recruit a capable sales staff as well as the

       interests of the individual employees in being able to compete freely in the

       employment marketplace. Generally, we do not think that the covenant unduly

       interferes with these interests. If any employee of Zimmer Biomet wishes to

       leave and work for Heraeus, the covenant presents no obstacle; indeed, it seems

       that any Zimmer Biomet employee can even be actively recruited by Heraeus,

       just not with Kolbe’s participation. Appellants do not really dispute any of this,

       arguing only that Zimmer Biomet does not have a legitimate interest in

       restricting the employment mobility of “employees such as drivers or shelf

       stockers[.]” Appellants’ Br. p. 43.

[25]   On this point, we agree with Appellants; Zimmer Biomet has not shown that it

       has a legitimate protectable interest in its entire workforce, which includes

       many employees who would not have access to or possess any knowledge that

       would give a competitor an unfair advantage. Appellants would have us

       invalidate the entire Kolbe Agreement due to this overbreadth, but we choose

       to reform the overbroad provision instead. As a general rule, “[i]f a court finds

       that portions of a noncompetition agreement or covenant not to compete are

       unreasonable, it may not create a reasonable restriction under the guise of

       interpretation, since this would subject the parties to an agreement they have

       not made.” Gleeson v. Preferred Sourcing, LLC, 883 N.E.2d 164, 177 (Ind. Ct.

       App. 2008). Here, however, the parties specifically agreed that we have the

       authority “to reform any [unreasonable] provision to make it enforceable under

       applicable law.” Appellants’ App. Vol. IV p. 156. To that end, we reform the

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019       Page 16 of 21
       non-solicitation of employees covenant of the Kolbe Agreement to be limited in

       scope to those employees in which the company has a legitimate protectable

       interest.

                   B. Whether the Trial Court Misapplied the Kolbe
                   Agreement in Crafting the Preliminary Injunction
                                               1. Geographic Scope
[26]   Appellants contend that the trial court erred in ordering that Kolbe be enjoined

       from operating in the entire state of Michigan when Plaintiff’s Exhibit 129

       indicates that the Upper Peninsula is divided between Zimmer Biomet’s East

       and West regions. We agree. For the reasons previously mentioned, we

       remand with instructions to revise the preliminary injunction to exclude that

       portion of Michigan included in the West region.

                               2. Non-Solicitation of Customers Covenant
[27]   Appellants contend that the trial court’s preliminary injunction order is

       unreasonable in that its language exceeds the scope of the Kolbe Agreement’s

       non-solicitation of customers language. The non-solicitation covenant of the

       Kolbe Agreement reads, in full, as follows:

               Employee will not, directly or indirectly, (i) provide, sell or
               market; (ii) assist in the provision, selling or marketing of; or (iii)
               attempt to provide, sell or market any Competing Products to any
               of Company’s Customers or Active Prospects in the Restricted
               Territory. For purposes of this paragraph, “directly or indirectly”
               shall mean, without limitation, that Employee will not be
               permitted to contact for the purpose of selling, soliciting or
               influencing any Customer or individual affiliated with any
               Customer that purchases Competing Products or complimentary

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019          Page 17 of 21
               or ancillary medical services, which Employee agrees is a
               reasonable limitation to prevent cross marketing or leveraging of
               the Employee’s relationship with Company’s Customers. This
               restriction shall not include or prohibit Employee from working
               for or on behalf of an individual or entity that is not a Competing
               Organization.
       Appellants’ App. Vol. IV p. 153. The trial court enjoined Kolbe from

       “[p]roviding, selling or marketing to, or contacting any of Zimmer Biomet’s

       Customers to whom Kolbe sold during his last two years or to Zimmer Biomet’s

       Active Prospects to whom Kolbe marketed Zimmer Biomet products in his last

       six months of employment[.]” Appellants’ App. Vol. II p. 59.

[28]   Specifically, Appellants contend that the trial court unreasonably (1) deleted the

       phrase “in the Restricted Territory,” (2) deleted the last sentence of the

       paragraph, and (3) added the word “contacting.” We do not see how the trial

       court’s deletion of the phrase “restricted territory” could prejudice Heraeus or

       Kolbe. The injunction prohibits Kolbe from soliciting his former customers and

       active contacts, who necessarily would have been from the “restricted

       territory,” essentially rendering the term unnecessary. Deletion of the last

       sentence strikes us as similarly harmless, as it merely states when the covenant

       does not apply, information that can easily be inferred from language

       explaining when it does.

[29]   As for Appellants’ claim that insertion of the word “contacting” into the

       preliminary injunction was unreasonable, we acknowledge that they have a

       point. The non-solicitation language in the Kolbe Agreement prohibits Kolbe

       from contacting his former customers or active contacts, but only if it is “for the

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019       Page 18 of 21
       purpose of selling, soliciting or influencing any Customer or individual

       affiliated with any Customer that purchases Competing Products or

       complimentary or ancillary medical services[.]” Appellants’ App. Vol. IV p.

       153. Although Kolbe was enjoined from contacting former customers and

       active contacts for all purposes, the Kolbe Agreement did not go that far. We

       remand with instructions to narrow the scope of the preliminary injunction

       accordingly.

                               3. Non-Solicitation of Employees Covenant
[30]   As mentioned, we have reformed the Kolbe Agreement to limit the scope of

       Kolbe’s obligation not to solicit Zimmer Biomet employees to those in which it

       has a legitimate protectable interest. We remand with instructions to narrow

       the scope of the preliminary injunction accordingly.

                                II. Injunction Against Heraeus
[31]   Appellants also contend that portions of the trial court’s preliminary injunction

       concerning Heraeus were unreasonable. Specifically, Appellants contend that

       the prohibitions on Heraeus using confidential information received from its

       parent Heraeus Medical GmbH are unreasonable and that the term for Heraeus

       to monitor Kolbe’s compliance with the preliminary injunction is unreasonably

       longer than the term of the Kolbe Agreement itself.

                 A. Confidential Information from Heraeus GmbH
[32]   The trial court preliminarily enjoined Heraeus from “possess[ing], us[ing] or

       disclos[ing] any Zimmer Biomet Confidential Information received from […]

       Zimmer Biomet through its parent, Heraeus Medical GmbH.” Appellants’
       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019      Page 19 of 21
       App. Vol. II p. 60. On January 3, 2019, however, the parties entered into a

       joint stipulation to alter the preliminary injunction to state that Heraeus may,

       “beginning on January 1, 2019, possess and/or use the information contained

       in the Quarterly Reports identified in Paragraph 2.4(c) of the United States

       Distribution and Supply Agreement (‘Distribution Agreement’) dated January

       1, 2012.” Appellees’ Supp. App. Vol. III p. 66. Appellants do not claim that

       Heraeus is entitled to receive any confidential information from Heraeus

       Medical GmbH beyond that contained in the quarterly reports, so Heraeus has

       already received the benefit Appellants seek in this appeal. Consequently, this

       claim is moot, and we need not address it further. See Jones, 847 N.E.2d at 200.

                      B. Duration of Heraeus’s Oversight of Kolbe
[33]   The trial court’s order provided, in part, that “Heraeus shall not employ or

       engage the Individual Defendants in any capacity that violates their respective

       Agreements or this Order for 18 months from the entry of this Preliminary

       Injunction.” Appellants’ App. Vol. II p. 60. Appellants contend that this part

       of the preliminary injunction amounts to an improper extension of Kolbe’s

       covenants beyond the terms of the Kolbe Agreement. As Zimmer points out,

       however, the language at issue enjoins Heraeus, not Kolbe, and, as such, has no

       effect on the length of his covenants. Moreover, we do not see how Heraeus

       can establish any possibility of prejudice under the circumstances. Even if we

       assume that the trial court’s order has the effect of improperly extending the

       term of Heraeus’ oversight obligation past the end of Kolbe’s covenants, there is

       simply nothing to oversee once Kolbe’s covenants run. Appellants have failed

       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019      Page 20 of 21
       to establish the trial court’s preliminary injunction is unreasonable in this

       regard.


                                                 Conclusion
[34]   We conclude that all of Appellants’ claims regarding Burns are moot. We also

       conclude that (1) the Kolbe Agreement is not rendered unenforceable because it

       lacks a defined geographic scope and (2) its covenant to not solicit customers of

       active contacts is not overbroad. We do agree, however, that the Kolbe

       Agreement’s covenant not to solicit Zimmer Biomet employees is overbroad,

       and so reform it as the parties agreed the court has the power to do. We also

       agree with Appellants that the trial court misapplied the Kolbe Agreement in

       enjoining Kolbe from operating in the entire state of Michigan and from

       contacting his former customers or active prospects for any reason whatsoever.

       Finally, we conclude that Appellants have not established that the trial court’s

       preliminary injunction as it related to Heraeus was unreasonable in any respect.

[35]   We affirm the interlocutory order of the trial court in part, reverse in part, and

       remand for further proceedings consistent with this opinion.


       Crone, J., and Tavitas, J., concur.




       Court of Appeals of Indiana | Opinion 18A-PL-1823 | April 15, 2019        Page 21 of 21
