Heraeus Medical, LLC v. Zimmer, Inc., a Delaware corporation d/b/a Zimmer Biomet, and Zimmer US, Inc., a Delaware corporation

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

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 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

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 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

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 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

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 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

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 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.

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