Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA394575
`ESTTA Tracking number:
`02/22/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91194774
`Plaintiff
`BN Immunotherapeutics, Inc.
`EDWARD A. PENNINGTON
`HANIFY & KING, P.C.
`1055 THOMAS JEFFERSON STREET NW, SUITE 400
`WASHINGTON, DC 20007
`UNITED STATES
`stp@hanify.com, eap@hanify.com, ip-docketing@hanify.com
`Other Motions/Papers
`Sean T.C. Phelan
`stp@murphyking.com
`/Sean T.C. Phelan/
`02/22/2011
`Motion for Protective Order and Stay.pdf ( 13 pages )(39543 bytes )
`Exhibit A - Emails between Jennings and Pennington.pdf ( 4 pages )(39721
`bytes )
`Exhibit B - Emails between Jennings and Pennington.pdf ( 3 pages )(21596
`bytes )
`Exhibit C - Emails between Jennings and Phelan.pdf ( 3 pages )(23530 bytes )
`Exhibit D - Therasense v. Becton.pdf ( 5 pages )(399892 bytes )
`Rasmussen Declaration.pdf ( 21 pages )(1345197 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91194774
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`Serial No. 79/048,489
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`BN Immunotherapeutics, Inc.,
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`Opposer,
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`v.
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`AmVac AG Corporation,
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`Applicant.
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`INTRODUCTION
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`In this motion, the opposer, Bavarian Nordic Immunotherapeutics, Inc. (“BNIT”), a
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`member of Bavarian Nordic Group, moves for entry of a protective order to allow pre-trial
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`discovery to proceed while protecting the confidential business information of both parties from
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`disclosure. Both sides in this case agree that a protective order is appropriate. Both sides agree
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`on most of the relevant provisions. The parties, however, have been unable to reach agreement
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`on one of the key issues—whether Bavarian Nordic Group’s in-house counsel should have
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`access to the most highly confidential discovery materials.
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`In summary, the key issue is whether Li Westerlund, Bavarian Nordic Group’s Vice
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`President for Global IP, should have access to the most highly confidential material to allow her
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`active involvement and representation of the Bavarian Nordic Group in this matter directly
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`pertaining to its intellectual property rights. As this memorandum shows, Dr. Westerlund has no
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`role in making the kind of competitive business decisions that justify excluding counsel—
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`whether in-house counsel or an outside law firm—from access to discovery material.
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`For the reasons that follow, BNIT respectfully requests that the Trademark Trial and
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`Appeal Board issue the protective order in the form it has proposed.
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`

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`A.
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`Procedural Posture.
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`BACKGROUND
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`BN ImmunoTherapeutics (BNIT) is developing active immunotherapies for the treatment
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`of cancer. Its lead product PROSTVAC is a therapeutic vaccine for the treatment of prostate
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`cancer that is being prepared for entry into phase 3 clinical trials. The pipeline has additional
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`clinical development stage candidates, such as the breast cancer therapeutic vaccine MVA-BN-
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`HER2. BNIT is a member of the Bavarian Nordic Group, which is a leading industrial
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`biotechnology company developing and producing novel vaccines for the treatment and
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`prevention of life-threatening diseases with a large unmet medical need. The Group's business
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`strategy is focused in three areas: biodefense, cancer and infectious diseases. Bavarian Nordic
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`was founded in 1994 and has been listed on the Copenhagen Stock Exchange since 1998. The
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`cancer vaccine business, with research and development headquartered at BNIT in California, is
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`an important strategic area for the Group. With operations in Denmark, Germany, the USA, and
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`Singapore, Bavarian Nordic employs over 400 people.
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`AmVac AG (“AmVac”) is a biopharmaceutical company with a strategic focus on the
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`development and subsequent commercialization of innovative immune therapies and
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`prophylactic vaccines. The head office of the company is in Zug, Switzerland. Creating new
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`therapies for the indication areas gynecology, urology and respiratory diseases are at the core of
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`AmVac’s strategy. AmVac was founded in 2005. According to its website, the primary goal of
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`AmVac’s strategy is to become a fully integrated biopharmaceutical company creating medical
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`and commercial value on a sustainable basis. Depending on the indication and market involved,
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`AmVac aims to develop and market its products either alone or, if necessary, with qualified
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`partners.
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`2
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`

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`BNIT has opposed AmVac’s United States Trademark Application Serial No. 79/048,489
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`(for “PROSTAVAC”) based on prior use, as laid out in BNIT’s Notice of Opposition, entered
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`May 3, 2010.
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`B.
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`Negotiation of the Protective Order.
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`
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`Very early on in the opposition, the parties’ agreed to abide by the Trademark Trial and
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`Appeal Board’s standard protective order (found at http://www.uspto.gov/trademarks/
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`process/appeal/guidelines/stndagmnt.jsp). The Board’s standard protective order allows in-house
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`counsel to view all materials except those marked “highly confidential, attorneys’ eyes only.”
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`
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`On November 12, 2010, BNIT first inquired as to whether AmVac would consent to
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`allowing Dr. Westerlund to view “highly confidential, attorneys’ eyes only” documents. See
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`Exhibit A at 2 (November 12, 2010 email from Mr. Pennington to Mr. Jennings). AmVac did
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`not respond until January 11, 2010. See id. at 1. BNIT renewed its request on February 6, 2011.
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`See Exhibit B (February 6, 2011 email from Mr. Pennington to Mr. Jennings). AmVac replied
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`on February 7, 2011 without giving a definite response to BNIT’s request regarding either the
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`protective order issue or its request that discovery be stayed while the protective order issue was
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`decided. See id. BNIT again inquired as to whether AmVac had a final response to the request
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`to add Dr. Westerlund to the protective order or, in the alternative, to stay discovery while this
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`motion was pending. See Exhibit C at 2 (February 16, 2011 email from Mr. Phelan to Mr.
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`Jennings). Despite BNIT’s requests for clarification, AmVac has not responded definitively to
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`any of BNIT’s inquires about its position, instead urging BNIT to file the instant motion. See id.
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`at 1.
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`C.
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`Dr. Westerlund’s Role At Bavarian Nordic.
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`Dr. Westerlund was hired by Bavarian Nordic, A/S, the parent company of BNIT, in
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`3
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`2004 as Director of Intellectual Property Rights. (Declaration of Rasmussen in Support of
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`BNIT’s Motion for Protective Order (“Rasmussen Decl.”) ¶ 3). In October 2007, her title
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`changed to Vice President for Global Intellectual Property. (Id.). Since joining the company,
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`she has been responsible for legal enforcement or defense of Bavarian Nordic Group's
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`intellectual property assets. (Id.). Dr. Westerlund is admitted to practice law in California and
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`the District of Columbia. (Rasmussen Decl. ¶ 6).
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`Dr. Westerlund is in charge of Bavarian Nordic Group's Global IP. The Transactions and
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`Legal Department, located in Kvistgard, Denmark, directly handles licensing agreements and
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`negotiations and is a separate and distinct department from Global IP. (Rasmussen Decl. ¶ 4).
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`The Global IP Department was deliberately set up separately from the Legal and Transactional
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`Department. Specifically, this separation was put in place to ensure the independence for Dr.
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`Westerlund that would allow her active and direct representation in any matter involving
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`enforcement and defense of Bavarian Nordic Group’s intellectual property.
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`The Bavarian Nordic Group has a management team that consists of four executives: the
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`President and CEO of Bavarian Nordic A/S, the parent company, the Executive Vice President
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`and Division President Infectious Disease, the Executive Vice president and Division President
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`Cancer Vaccines and the Executive Vice President and Chief Financial Officer. (Rasmussen
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`Decl. ¶ 2 & Ex. 1). Key decisions at Bavarian Nordic Group are not made by Dr. Westerlund,
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`but rather by the management team, or in some cases the Board of Directors. (Rasmussen Decl. ¶
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`7). Key decisions at BNIT are not made by Dr. Westerlund, but rather by its CEO and President,
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`also a member of the Group’s management team. (Id). These include decisions about the
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`direction of the company's R&D efforts; employment decisions regarding top-level managers
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`and scientists; decisions about the significant commercial aspects of the business such as pricing,
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`4
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`partnering, collaborations, technology transfer (including licensing); and all major decisions
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`relating to clinical trial work.
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`All significant business agreements concerning these matters are drafted within the Legal
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`Department, not Dr. Westerlund's Global IP group. The terms of those agreements are decided
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`by the CEO and the other members of the management team, and at time by the Board of
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`Directors, with advice from Mr. Rasmussen. (Id.; Rasmussen Decl. ¶ 2). Importantly, Dr.
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`Westerlund does not participate in making any of the decisions just described. (Rasmussen Decl.
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`¶ 8). This includes participating in or advising on decisions regarding pricing of products, design
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`of products, or any similar issues that might be made in light of similar information about
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`competitors. (Rasumussen Decl. ¶ 14). Moreover, upon information and belief AmVac is not a
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`direct competitor to the Bavarian Nordic Group in the market.
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`Neither Dr. Westerlund nor her superior, Mr. Rasmussen, is a member of the Board of
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`Directors or members of the management team. (Rasumssen Decl. ¶ 8). On occasion, the
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`management team may ask Dr. Westerlund to review a contract, but only as to the form of the
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`agreement, never as to the substantive business terms. (Id.).
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`Part of Bavarian Nordic Group's business is in the field of bio-defense, and Bavarian
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`Nordic sells to governmental entities through the "RFP" or “request for proposal” process.
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`(Rasmussen Decl. ¶ 9). Dr. Westerlund never participates in the RFP process, nor does she
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`participate in any clinical trial work or decisions regarding clinical trials (including the drafting
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`of legal documents). (Id.). Nor does Dr. Westerlund participate in decision-making concerning
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`the direction of Bavarian Nordic Group's technical research. (Id.).
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`Bavarian Nordic decided to hire Dr. Westerlund precisely to serve as in-house counsel
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`directly involved in the company's intellectual property litigation. (Rasmussen Decl. ¶ 5). The
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`5
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`

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`company has a substantial investment in having her participate actively, side-by-side, with
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`outside counsel. (Id.). She is familiar with the company's technology, personnel, and
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`institutional knowledge that make her an irreplaceable and valuable member of the intellectual
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`property litigation team. (Id.). For these reasons, she is Bavarian Nordic Group's (and in this
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`case BNIT’s) choice of counsel and BNIT would be significantly prejudiced if she were not
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`permitted to do the job she was hired to do – namely: work on the litigation team alongside
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`outside counsel. (Id.).
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`On occasion, the management team has delegated authority to Dr. Westerlund to attempt
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`to negotiate terms of a settlement agreement in intellectual property disputes. (Rasmussen Decl.
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`¶ 10). In fact, it has done so in this case. (Id.). But her authority was limited insofar as the
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`management team had already decided the general parameters of what would be acceptable to
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`the company. (Id.). Dr. Westerlund was authorized only to agree to terms that had not previously
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`been authorized by Bavarian Nordic's management. (Id.).
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`Dr. Westerlund participates day-to-day in Bavarian Nordic Group's ongoing IP disputes.
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`(Rasmussen Decl. ¶ 11). She works directly with outside counsel to draft and review pleadings,
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`review and prepare discovery responses, and prepare for and participate in hearings. (Id.). Dr.
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`Westerlund keeps Mr. Rasmussen informed of the status of each case, but she does not report to
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`him on a regular basis on the details of any particular dispute. (Id.). Thus, for example, Mr.
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`Rasmussen does not review draft pleadings. (Id).
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`Mr. Rasmussen and Dr. Westerlund have never discussed any confidential documents
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`produced by another party in litigation, and such discussions would not take place in this case.
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`(Rasmussen Decl. ¶ 13). Nor does Mr. Rasmussen have such discussions with outside counsel.
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`(Id.). Thus with respect to confidential discovery materials, the relationship between Bavarian
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`6
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`Nordic Group, including BNIT, and Dr. Westerlund is the same as its relationship with outside
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`counsel. (Id.).
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`D.
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`AmVac’s Production
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`
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`To date, AmVac has produced 329 pages of documents in response to BNIT’s 22
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`document requests. Of those 329 pages, the only documents without the “Trade
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`Secret/Commercially Sensitive” stamp are publicly available trademark documents. AmVac has
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`stamped every single internal document such that only outside counsel for BNIT may view them.
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`A.
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`Overview.
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`ARGUMENT
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`The Court, of course, has the power to issue a protective order to protect the trade secrets
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`or other confidential research, development, and commercial information of the parties and of
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`third parties subject to discovery. Fed. R. Civ. P. 26(c)(1)(G). Indeed, protective orders are a
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`matter of course in trademark oppositions, and as already noted, the T.T.A.B. has approved a
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`form of a protective order for use in oppositions.
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`In general, the party seeking entry of the protective order has the burden to show good
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`cause. Forest Prods. N.W., Inc. v. United States, 453 F.3d 1355, 1361 (Fed. Cir. 2006) (under
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`cognate Rule 26(c) of the Rules of the Court of Federal Claims). Here, however, both parties
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`agree on the need for a protective order, and both have agreed, with only a single material
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`exception, to the form of the order the Court itself has prescribed. Therefore, the question for the
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`Court is not whether BNIT has shown that a protective order is needed, but rather, whether BNIT
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`has shown that Dr. Westerlund should have access to highly confidential information.
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`The key principle in this area is that the most highly sensitive information should be kept
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`out of the hands of “competitive decision-makers” for the non-producing party. As the Federal
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`7
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`

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`Circuit said in the seminal case, the phrase “competitive decision-making” is
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`serviceable as shorthand for a counsel’s activities, association, and
`relationship with a client that are such as to involve counsel’s
`advice and participation in any or all of the client’s decisions
`(pricing, product design, etc.) made in light of similar or
`corresponding information about a competitor.
`
`U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984). The Trademark
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`Trial and Appeal Board has recognized the Federal Circuit’s standard, as laid out in U.S. Steel, as
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`its own standard. See Georgia-Pacific Corp. and Fort James Operating Co. v. Solo Cup Co.;
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`Opp. No. 91157923 (T.T.A.B. 2006) (“…our primary reviewing court suggests that the
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`determining factor in any analysis is whether in-house counsel is involved in its employer-
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`litigant’s ‘competitive decisionmaking.’” (citing U.S. Steel, 730 F.2d at 1465)).
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`Courts have identified various factors that can show that a particular in-house lawyer (or
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`for that matter, an outside counsel) is a competitive decision-maker. There is no hard-and-fast
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`rule for determining whether in-house counsel is a competitive decision-maker; the test is, in
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`essence, functional rather than formal. Courts consider whether there is an individualized factual
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`showing that the counsel in question is a competitive decision-maker. See SmartSignal Corp. v.
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`Expert Microsys., Inc., 2006 WL 1343647, at *6 (N.D. Ill. May 12, 2006).
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`The courts have also, and relatedly, focused on whether there is a risk of inadvertent
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`disclosure. In other words, even if a court finds that a particular counsel is not a competitive
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`decision-maker, is there an unacceptable risk that if counsel is given access to highly sensitive
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`information, it will be inadvertently disclosed to others within the business to the detriment of
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`the producing party? The Federal Circuit rejected the notion that in-house counsel are more
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`likely in general to inadvertently disclose confidential material. U.S. Steel, 730 F.2d at 1467-68;
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`Brown Bag Software, 960 F.2d 1465, 1470 (Fed. Cir. 1992); cf. Matsushita Elec. Indus. Co. v.
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`United States, 929 F.2d 1577, 1579-80 (Fed. Cir. 1991) (same result in ITC antidumping petition
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`
`
`8
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`case, where applicable regulation was to be interpreted under “the factors enumerated in [U.S.
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`Steel]”). As the Federal Circuit has noted:
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`Like retained counsel, however, in-house counsel are officers of
`the court, are bound by
`the same Code of Professional
`Responsibility, and are subject to the same sanctions. In-house
`counsel provide the same services and are subject to the same
`types of pressures as retained counsel. The problem and
`importance of avoiding inadvertent disclosure is the same for both.
`Inadvertence, like the thief-in-the-night, is no respecter of its
`victims. Inadvertent or accidental disclosure may or may not be
`predictable. To the extent that it may be predicted, and cannot be
`adequately forestalled in the design of a protective order, it may be
`a factor
`in
`the access decision. Whether an unacceptable
`opportunity for inadvertent disclosure exists, however, must be
`determined, as above indicated, by the facts on a counsel-by-
`counsel basis, and cannot be determined solely by giving
`controlling weight to the classification of counsel as in-house
`rather than retained.
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`U.S. Steel, 730 F.2d at 1468.
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`
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`And the courts have focused on the counsel’s dealings with senior management—people
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`who are clearly competitive decision-makers. The Federal Circuit has made it clear that it is not
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`enough to show that the counsel has regular contact with competitive decision-makers. To show
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`competitive decision-making, one must show that the counsel advised and participated in the
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`decision-making process on the key competitive issues of relevance to the analysis (pricing,
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`patent prosecution, product design, etc.). See Sibia, 132 F.3d at *3 (citing Matsushita, 929 F.2d
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`at 1580).
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`B.
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`Dr. Westerlund Is Not A Competitive Decision-Maker.
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`In light of these principles and the facts outlined above, it is plain that Dr. Westerlund is
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`not a competitive decision-maker. She is not a member of the senior management team. In fact,
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`her direct superior is not even a member of the Board of Directors. She is not involved decisions
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`regarding product pricing, product development, and the like. When she does advise on key
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`9
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`business agreements, it is only with respect to form, never with respect to the substantive
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`business terms. She is a member of the bars of California and of the District of Columbia and is
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`therefore subject to professional discipline in those jurisdictions as well as in this Court, see Civ.
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`L.R. 83.5. There is no evidence of, or reason to think that there is a particular risk of inadvertent
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`disclosure. And her principal role within Bavarian Nordic Group—indeed, the reason she was
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`hired—is to handle litigation matters. Licensing and other key transactional matters are handled
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`by others. Dr. Westerlund routinely reviews, revises and drafts litigation filings and discovery
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`materials in this and in other cases, and she represents that she will keep all highly confidential
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`documents in her custody, as required by the proposed protective order.
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`These are precisely the factors that led the court to reject an attempt to exclude in-house
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`counsel from access in Therasense, Inc. v. Becton, Dickinson & Co., slip op. (N.D. Cal. Aug. 11,
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`2005).1 There, the evidence was that the in-house counsel were not competitive decision-makers
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`and that, just as is true of Dr. Westerlund, counsel "ordinarily involved themselves in litigation,
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`including regularly attending depositions and hearings, and drafting or reviewing substantive
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`pleadings and responses." Id. at 4. There are similar cases in other jurisdictions. In Wi-Lan, Inc.
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`v. Acer, Inc., 2009 WL 1766143, at *3 (E.D. Tex. Jun. 23, 2009), for example, in-house counsel
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`who were involved "only in litigation and settlement negotiations" were not subject to a bar on
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`access to sensitive materials.
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`In short, because Dr. Westerlund is not a competitive decision-maker, and because she
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`serves essentially as in-house litigation counsel and poses no risk of inadvertent disclosure of
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`highly sensitive materials, there is no justification from excluding her from access to HIGHLY
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`CONFIDENTIAL—ATTORNEYS’ EYES ONLY materials. Indeed, such an exclusion would
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`1 A true copy of this decision, which is not available on Westlaw, is attached to this memorandum as Exhibit D.
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`10
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`

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`keep her from doing the job she was hired to do, without protecting AmVac from any
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`discernable harm or risk of harm.
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`As explained in Mr. Rasmussen's Declaration, because Bavarian Nordic hired Dr.
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`Westerlund precisely for the purpose of handling its IP litigation, and because her knowledge of
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`the technology at issue and of Bavarian Nordic Group's personnel and institutional practices
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`make her particularly valuable for that function, it would be highly prejudicial to deprive BNIT
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`of its choice of counsel. This is particularly true where, as here, Bavarian Nordic Group has
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`divided responsibilities among its corporate officers precisely so as to make it possible for Dr.
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`Westerlund to participate in such litigation by assigning all competitive decision-making
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`functions to others. The prejudice would be both to the ability of the BNIT litigation team to
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`function optimally and financial, since BNIT would have to pay for outside counsel's time on
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`matters on which Dr. Westerlund is already intimately familiar.
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`C.
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`Discovery should be Stayed Pending the Ruling on this Motion
`
`
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`As described supra, Dr. Westerlund is actively involved in securing and protecting
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`Bavarian Nordic Group’s worldwide intellectual property rights, including BNIT’s. As such, she
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`is actively involved in the instant case, though currently limited by the protective order. In order
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`for BNIT to be able to adequately prosecute this opposition, Dr. Westerlund must have access to
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`highly-confidential information. Dr. Westerlund drafts discovery requests and responses, plays a
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`large role in document review and production, and, if allowed, would take and defend
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`depositions of AmVac and other witnesses.
`
`
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`Discovery is scheduled to close on April 11, 2011. As such, BNIT respectfully requests a
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`stay of discovery while the instant motion is being decided. As discussed on page 3 supra, BNIT
`
`has been attempting to have Dr. Westerlund added to the protective order since December of
`
`
`
`11
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`

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`2010. AmVac’s tardiness in responding appears to be a deliberate attempt to delay the issue
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`until after discovery closes, effectively cutting Dr. Westerlund out of the discovery process.
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`Because the close of discovery is approaching, failing to stay the proceedings may deny
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`Dr. Westerlund the opportunity to actively participate in discovery, should the motion be
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`granted.
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`CONCLUSION
`
`For the foregoing reasons, BNIT respectfully requests that the Court issue the protective
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`order in the form proposed by BNIT.
`
`
`
`Dated: February 22, 2011
`
`
`
`
`
`Respectfully submitted,
`
`BN IMMUNOTHERAPEUTICS, INC.
`
`By its attorneys:
`
`/s/ Edward A. Pennington
`Edward A. Pennington
`Sean T.C. Phelan
`MURPHY & KING, Professional Corporation
`1055 Thomas Jefferson St., N.W.
`Suite 400
`Washington, D.C. 20007
`Tel: (202) 403-2100
`Fax: (202) 429-4380
`eap@murphyking.com
`stp@murphyking.com
`
`#587457
`
`
`
`
`
`12
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`

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`Certificate of Service
`
`I hereby certify that I have this 22nd day of February, 2011 served a copy of the
`foregoing document upon counsel or record via First Class United States Mail and electronic
`mail.
`
`
`Patrick Jennings
`Pillsbury Winthrop Shaw Pittman, LLP
`2300 N St., N.W.
`Washington, D.C. 20037
`Phone: (202) 663-8000
`Fax: (202) 663-8007
`patrick.jennings@pillsburylaw.com
`
`
`
`/s/ Edward A. Pennington
`Edward A. Pennington
`Sean T.C. Phelan
`MURPHY & KING, Professional Corporation
`1055 Thomas Jefferson St., N.W.
`Suite 400
`Washington, D.C. 20007
`Tel: (202) 403-2100
`Fax: (202) 429-4380
`eap@murphyking.com
`stp@murphyking.com
`
`
`
`
`
`13
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`

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`EXHIBIT A
`EXHIBIT A
`
`
`
`

`
`Page 1 of 3
`
`Sean T.C. Phelan
`
`From:
`Jennings, Patrick J. [patrick.jennings@pillsburylaw.com]
`Sent:
`Tuesday, January 11, 2011 10:30 AM
`To:
`Edward A. Pennington; Sean T.C. Phelan
`Cc:
`Jennings, Patrick J.
`Subject:
`RE: Bavarian Nordic
`Attachments: Scan To Email; Scan To Email; Scan To Email
`
`Ed,
`
`
`My apologies. I just realized I never responded to this e-mail, though I did discuss it with the client
`prior to the holidays.
`
`
`Anyway, our client would prefer that in-house lawyers in this case, including Dr. Westerlund, not be
`allowed to see documents marked "trade secret/commercially sensitive." Our client has produced a
`number of very confidential business documents and it would not like anyone from BNI to see those
`documents. I am normally amenable to reciprocal requests like the one you have made, but in this case
`the client is adamant that BNI not be given access to its "trade secret/commercially
`sensitive" documents. For this reason, I cannot consent to your request to allow in-house counsel access
`to documents marked "trade secret/commercially sensitive."
`
`
`The client remains interested in considering possible settlement options, but because you have taken
`some discovery in this case our client feels like you have more information about our client's proposed
`use of PROSTAVAC than our client has about BNI's proposed use of PROSTVAC. As a result,
`yesterday (the date on which the proceeding came off of suspension) we served some discovery requests
`on you by first class mail. I have attached those requests to this e-mail for your reference and as a
`matter of professional courtesy. Once we have taken a look at your client's responses to our requests,
`our client feels like it will be on equal ground with your client and in a better position to resume
`settlement discussions at that time.
`
`
`Please feel free to call if you have any questions about this matter.
`
`
`Regards,
`
`
`Pat
`
`
`PS - I wish you and Sean a Happy New Year.
`
`
`
`
`Patrick J. Jennings, Esq.
`Pillsbury Winthrop Shaw Pittman LLP
`————————————————————————————————
`Tel: 202.663.8918 | Fax: 202.663.8007 |
`2300 N Street, N.W. | Washington, D.C. 20037-1128
`
`Email: patrick.jennings@pillsburylaw.com
`www.pillsburylaw.com
`
`2/22/2011
`
`

`
`Page 2 of 3
`
`
`
`
`From: Edward A. Pennington [mailto:eap@hanify.com]
`Sent: Friday, November 12, 2010 4:25 PM
`To: Jennings, Patrick J.
`Subject: Bavarian Nordic
`
`Pat,
`
`
`Thank you for your recent emails regarding my client’s in house counsel, Dr. Li Westerlund.
`
`
`To answer your questions, Dr. Westerlund has so far only seen the interrogatory responses that you provided us
`and those responses were not marked “trade secret/commercially sensitive” as the protective order specifies for
`marking documents that are restricted only to outside counsel. However, your comments raise an issue for us to
`deal with future materials marked “trade secret/commercially sensitive,” in that in the past we have always sought
`to have reciprocal rights of in house counsel to see all documents. In the present case, we agreed to rely on the
`TTAB model protective order because, at the time, we were not sure how far the case would go, and it did not
`seem necessary at the time to. I am now proposing that we amend the protective order to allow access to all
`documents by one in house counsel for each side, as obviously in-house counsel are equally bound by ethical
`rules of conduct as are outside counsels. In our case, Bavarian Nordic’s in house counsel would be Dr.
`Westerlund.
`
`
`So you understand how she works within the company, Dr. Westerlund is not a “competitive decision maker” but
`is in charge of world-wide intellectual property rights for the company; Dr. Westerlund’s department is separate
`from the legal department, which is headed by the firm’s general counsel.
`
`
`With respect to communications between us, we are fine with keeping you and me as the point of contact, but as
`a courtesy, could you please copy Dr. Westerlund and Sean Phelan on communications to me? I will be happy to
`do the same for anyone on your team. It may be that Dr. Westerlund will want to contact you from time to time
`directly, but if she does, you certainly can reply to her directly. Sean may do the same from time to time,
`particularly since I am frequently on the road.
`
`
`Regarding settlement discussions, we remain open to such discussions, and we believe it would be fruitful to
`have on the next call a principal or in house attorney from your client, who might have settlement authority directly
`or delegated for purposes of meetings, and with authority to conduct a dialogue regarding the range of issues you
`raised in your e-mail prior to our last call. In our experience, direct involvement of the client in settlement
`discussions is the key to success and we were somewhat surprised over the reluctance to involve the actual
`parties in settlement discussions. Dr. Westerlund’s point was that it in house people typically have more
`information about the products and the business aspects that allow for a more creative dialogue, and may not
`need authority on a fact by fact basis to discuss certain things.
`
`I hope this note helps clarify any issues regarding our efforts to settle the case, and while we do not need to
`address the protective order today, at some point if it looks like we are going forward, I will ask for your agreement
`to modify the existing protective order to allow one (1) in house counsel for each party to have access to all
`materials.
`
`
`Sincerely,
`
`
`Ed
`"
`
`
`
`This e-mail message and any attachments are confidential
`and may be privileged. If you are not the intended recipient
`please notify Hanify & King, P.C. immediately -- by replying
`to this message or by sending a message to
`postmaster@hanify.com -- and destroy all copies of this
`message and any attachments. Thank you.
`
`2/22/2011
`
`

`
`Page 3 of 3
`
`
`
`For more information about Hanify & King, P.C., please visit
`us at http://www.hanify.com
`
`Pursuant to IRS Circular 230, please be advised that, to the
`extent this communication (and any attachments) contains
`any tax advice, it is not intended to be, and cannot be used,
`for purposes of avoiding penalties under the Internal Revenue Code.
`
`
`2/22/2011
`
`

`
`EXHIBIT B
`EXHIBIT B
`
`
`
`

`
`Page 1 of 2
`
`Sean T.C. Phelan
`
`From:
`Jennings, Patrick J. [patrick.jennings@pillsburylaw.com]
`Sent: Monday, February 07, 2011 9:42 AM
`To:
`Edward A. Pennington
`Cc:
`Sean T.C. Phelan; Jennings, Patrick J.
`Subject: RE: PROSTAVAC Opposition and Protective Order Issue
`
`Ed,
`
`I will forward this to the client and see what it says. I suspect the answer will be no, as it is the client
`who is driving the decision not to allow your client access to the documents in question. But I will let
`you know what my client says.
`
`
`Regards,
`
`
`Pat
`
`
`
`
`Patrick J. Jennings, Esq.
`Pillsbury Winthrop Shaw Pittman LLP
`————————————————————————————————
`Tel: 202.663.8918 | Fax: 202.663.8007 |
`2300 N Street, N.W. | Washington, D.C. 20037-1128
`
`Email: patrick.jennings@pillsburylaw.com
`www.pillsburylaw.com
`
`
`
`
`From: Edward A. Pennington [mailto:eap@murphyking.com]
`Sent: Sunday, February 06, 2011 11:32 AM
`To: Jennings, Patrick J.
`Cc: Sean T.C. Phelan
`Subject: PROSTAVAC Opposition and Protective Order Issue
`I mportance: High
`
`
`
`
`Pat-
`
` I am writing to check to see if you will consent to BNIT’s request that Dr. Li Westerlund, Bavarian Nordic’s
`in-house counsel, be added to the protective order and allowed to view highly confidential/attorneys eyes only
`material.
`
`