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`ESTTA868295
`01/02/2018
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Submission
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91233311
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`Defendant
`Gilead Capital LP
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`KANCHANA WANGKEO LEUNG
`GILEAD CAPITAL
`157 COLUMBUS AVENUE, STE 403
`NEW YORK, NY 10023
`UNITED STATES
`Email: kanchana@gileadcapital.com
`Other Motions/Papers
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`Kanchana Wangkeo Leung
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`kanchana@gileadcapital.com
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`/Kanchana Wangkeo Leung/
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`01/02/2018
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`2018-01-02 Motion to Amend Standard Protective Order.pdf(255611 bytes )
`2018-01-02 Leung Declaration ISO Motion to Amend Standard Protective Or-
`der.pdf(1987414 bytes )
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Opposition No. 91233311 (Parent)
`Opposition No. 91233327
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`Gilead Sciences, Inc.
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` v.
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`Gilead Capital LP
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`APPLICANT GILEAD CAPITAL’S
`MOTION TO AMEND THE STANDARD PROTECTIVE ORDER
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`PRELIMINARY STATEMENT
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`This is a case that warrants modification of the Board’s standard protective order because
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`Applicant Gilead Capital’s in-house counsel is the sole attorney defending the case and needs
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`access to all the information produced in order for Gilead Capital to have a full and fair
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`opportunity to be heard. Permitting in-house counsel to access Opposer’s trade secret or
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`commercially sensitive information would not create an unacceptable risk of disclosure or
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`misuse of the information for several reasons.
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`
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`First, Applicant’s in-house counsel has sworn that she would not knowingly or
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`intentionally disclose or use the information in violation of a protective order.
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`Second, Applicant’s in-house counsel has the experience and knowledge to implement
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`security safeguards to prevent unauthorized access to Opposer’s documents, such that there is a
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`low risk of inadvertent disclosure.
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`Third, Applicant’s in-house counsel is not involved in competitive decision making
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`because the parties are not competitors, and therefore, she cannot (mis)use any of Opposer’s
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`information to obtain unfair competitive advantage. Applicant is an investment management
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`firm, while Opposer is a pharmaceutical company. Applicant has neither the ability nor the
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`incentive to use Opposer’s proprietary information to advance its own commercial interests at
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`the expense of Opposer. The reasoning for a two-tiered protective order simply does not apply.
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`
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`Fourth, even if the parties were competitors—and they are not—Applicant’s in-house
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`counsel does not participate in competitive decision making at Gilead Capital. She does not
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`participate in investment decisions, but rather, performs primarily legal and compliance
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`functions, and her operational roles are either compliance-related or administrative.
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`1
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`

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`Accordingly, good cause does not exist for imposing the burdens of attorneys-eyes-only
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`restrictions in this case and they should be removed from the Protective Order.
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`STATEMENT OF FACTS
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`The Parties
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`
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`Applicant Gilead Capital LP (“Applicant,” “Gilead Capital,” or the “Firm”) is an
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`investment adviser, registered with the Securities and Exchange Commission (“SEC”) (SEC File
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`No. 801-107184), as a large advisory firm with regulatory assets under management of more
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`than $100 million. See Leung Decl. ¶ 9.1 Gilead Capital provides discretionary investment
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`advice and management services to certain institutional clients pursuant to investment
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`management agreements. Investment in separately managed accounts or private funds managed
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`by Gilead Capital is generally only available to institutional investors and certain high net worth
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`individuals that are “accredited investors,” “qualified clients,” and “qualified purchasers,” or
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`non-“U.S. persons” within the meaning of the Securities Act of 1933 (“Securities Act”), the
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`Investment Advisers Act of 1940 (“Advisers Act”), and the Investment Company Act of 1940
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`(“Investment Company Act”). See id. ¶ 10. Gilead Capital does not provide services to general
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`consumers or retail investors who do not meet the criteria for accredited investors, qualified
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`clients, or qualified purchasers. The Firm does not engage in general advertising, but rather,
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`relies on its partners’ existing personal and professional networks for introductions to potential
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`investors. See id. ¶ 11.
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`Gilead Capital employs an investment strategy of “Leadership Investing,” which
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`combines the principles of long-term value investing with responsible active ownership. The
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`1 The Declaration of Kanchana Wangkeo Leung, Esq. In Support Of Gilead Capital’s Motion to Amend the Standard
`Protective Order is referred to herein as the “Leung Decl.”
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`2
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`

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`Firm takes meaningful stakes in a concentrated group of companies that it believes has
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`underachieved their business and valuation potential and works productively with management
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`teams, boards of directors, and other stakeholders over long-term holding periods to elevate
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`corporate achievement and valuation by enhancing governance, strengthening management, and
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`improving strategy and execution. See Leung Decl. ¶ 12. The Firm believes that its constructive
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`investment approach is distinguishable from traditional activist investing and owns U.S.
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`Registration No. 5127612 for “Leadership Investing” in connection with “[h]edge fund
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`investment services; [i]nvestment advisory services; [i]nvestment management; [f]inancial
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`services, namely, operation and management of hedge funds, commodity pools and other
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`collective investment vehicles, and trading for others of securities, options, futures, derivatives,
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`debt instruments and commodities.” See id. ¶ 13.
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`
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`In selecting investments, Gilead Capital focuses on companies with small to mid-market
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`capitalizations and invests across a broad spectrum of industries in developed markets, including
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`but not limited to, North America, developed Europe, and Australia. The Firm invests primarily
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`in equity and equity-linked securities of an issuer, and may also invest in corporate debt
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`securities and derivatives. In addition, the Firm may utilize financial instruments such as futures,
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`forward contracts, stock index futures and options, and swaps, caps, and floors both for
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`investment purposes and to seek to hedge against changes in currency exchange rates, market
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`interest rates, and equity prices. See Leung Decl. ¶ 14. In short, Gilead Capital is in the business
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`of investing. See id. ¶ 15.
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`
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`In contrast, Opposer Gilead Sciences, Inc. (“Opposer”) is a pharmaceutical company. In
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`its 2016 Annual Form 10-K, Opposer describes its business as follows:
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`Gilead Sciences, Inc. (Gilead, we or us), incorporated in Delaware on June 22,
`1987, is a research-based biopharmaceutical company that discovers, develops and
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`3
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`commercializes innovative medicines in areas of unmet medical need. . . . Gilead’s
`primary areas of focus include human immunodeficiency virus (HIV), liver
`diseases such as chronic hepatitis C virus (HCV) infection and chronic hepatitis B
`virus
`(HBV)
`infection,
`hematology/oncology,
`cardiovascular
`and
`inflammation/respiratory diseases. We seek to add to our existing portfolio of
`products through our internal discovery and clinical development programs and
`through product acquisition and in-licensing strategies.
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`Leung Decl., Ex. 4 at 3.
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`Opposer states that its “products are marketed through [its] commercial teams and/or in
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`conjunction with third party distributors and corporate partners. [Opposer’s] commercial teams
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`promote [its] products through direct field contact with physicians, hospitals, clinics and other
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`healthcare providers.” Id., Ex. 4 at 7. Opposer sells and distributes its products “in the United
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`States exclusively through the wholesale channel. [Its] product sales to three large wholesalers,
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`McKesson Corporation, AmerisourceBergen Corporation and Cardinal Health, Inc. each
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`accounted for more than 10% of total revenues for each of the years ended December 31, 2016,
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`2015 and 2014. On a combined basis, in 2016, these wholesalers accounted for approximately
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`88% of [its] product sales in the United States and approximately 56% of [its] total worldwide
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`revenues.” Id., Ex. 4 at 7.
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`Furthermore, in a section entitled “Competition,” Opposer states that its
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`marketed products target a number of areas, including HIV, liver diseases,
`cardiovascular, hematology/oncology,
`inflammation/respiratory and other
`diseases. There are many commercial products for the treatment of these diseases.
`[Opposer] face[s] significant competition from large global pharmaceutical and
`biotechnology companies, specialized pharmaceutical firms and generic drug
`manufacturers. [Its] products compete with other available products based
`primarily on efficacy, safety, tolerability, acceptance by doctors, ease of patient
`compliance, ease of use, price, insurance and other reimbursement coverage,
`distribution and marketing. As [Opposer’s] products mature, private insurers and
`government payers often reduce the amount they will reimburse patients, which
`increases pressure on [Opposer] to reduce prices. Further, as new branded or
`generic products are introduced into major markets, [Opposer’s] ability to maintain
`pricing and market share may be affected. Id., Ex. 4 at 8 (emphasis added).
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`4
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`Opposer specifically identifies its competitors for its existing products as AbbVie Inc., Merck &
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`Co. Inc., Bristol-Myers Squibb, Janssen Therapeutics, ViiV, Pharmacyclics LLC, Genentech,
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`Cephalon, Inc., Actelion Pharmaceuticals US, Inc., United Therapeutics Corporation, Pfizer,
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`Novartis, and GlaxoSmithKline. See id., Ex. 4 at 31-32 (identifying competing products and
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`their manufacturers). Opposer also acknowledges competition from generic drug manufacturers
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`and specialty pharmaceutical firms and large pharmaceutical companies that are pursuing the
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`development of technologies which are competitive with existing products or research programs.
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`See id., Ex. 4 at 32.
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`Experience and Role of Gilead Capital’s In-House Counsel
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`Gilead Capital is being represented in its trademark applications (Application Nos.
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`87048887 and 87048941) and these proceedings by its in-house counsel, Kanchana Wangkeo
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`Leung. Ms. Leung joined the Firm in May 2016 as its Chief Legal Officer (“CLO”), Chief
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`Compliance Officer (“CCO”), and Chief Operating Officer (“COO”).
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`Among other qualifications, Ms. Leung has 15 years of litigation experience. See Leung
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`Decl. ¶ 2. She was previously a litigation partner at the law firm of Kasowitz, Benson, Torres &
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`Friedman LLP and had also practiced at Simpson Thacher & Bartlett LLP and Cohen, Milstein,
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`Hausfeld & Toll PLLC. She clerked for the Honorable Shira A. Scheindlin—who is known as
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`the “e-discovery judge”—in the United States District Court for the Southern District of New
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`York, and co-wrote a law review article with the judge regarding electronic discovery sanctions.
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`See id.
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`Accordingly, Ms. Leung has extensive experience in all facets of discovery. As relevant
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`to this motion, her discovery experience includes managing document productions and reviews
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`involving several terabytes of data and teams of more than 100 attorneys; securely handling
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`documents containing highly confidential information (e.g., trade secrets) as well as highly
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`sensitive non-public personal information (e.g., social security numbers, bank account numbers);
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`and compliance with protective orders. See Leung Decl. ¶ 3. Ms. Leung has worked closely
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`with external e-discovery vendors, litigation support staff, and copy services to ensure that
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`documents are processed and maintained properly and in accordance with any court orders. See
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`id. This includes overseeing at least twelve security audits of vendors, consultants, and expert
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`witnesses. The security audits entailed onsite visits, reviews of physical security and
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`cybersecurity measures, and interviews of information technology staff. See id. In all her years
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`of practice, Ms. Leung has never been accused of—let alone sanctioned for—violation of a
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`protective order. See id.
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`For these proceedings, Gilead Capital has retained a professional e-discovery services
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`firm to assist with document discovery. Given that its business depends on the security of its
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`services, the e-discovery vendor is also willing and able to comply with any applicable protective
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`order. See Leung Decl. ¶ 4.
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`Among other measures, documents produced in these proceedings will be maintained on
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`secure servers that are separate from the servers that Gilead Capital uses for its business. See
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`Leung Decl. ¶ 5. Access to Opposer’s documents will be restricted to prevent unauthorized
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`access by third parties or by business persons within Gilead Capital. See id. In her capacity as
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`counsel in these proceedings, Ms. Leung would be the only person within Gilead Capital to have
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`access to produced documents. See id. Ms. Leung is an officer of the court and would not
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`knowingly disclose or use any information in violation of a protective order. See id.
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`Currently, five people work at Gilead Capital. Four are investment professionals (the
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`Chief Investment Officer, the Director of Research, and two analysts) who are responsible for
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`investment decisions. See Leung Decl. ¶ 16. The investment process and decision-making
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`includes researching companies, forming opinions as to value and opportunities, making
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`decisions to trade or invest (e.g., whether to buy, sell, or hold; the timing, quantity, and price of
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`such purchases or sales; and the duration of positions), and negotiation and execution of trades.
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`See id. ¶ 15.
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`Ms. Leung does not participate in making investment decisions. However, as CLO/CCO,
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`she performs a legal and compliance function to ensure that Applicant’s investment process and
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`decisions comply with the law. She can prohibit or approve trades for legal or compliance
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`reasons, but she does not otherwise provide investment input. See Leung Decl. ¶ 17.
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`Registered investment advisers, such as Gilead Capital, are required to adopt and
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`implement policies and procedures reasonably designed to prevent violations of the Advisers Act
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`and to designate a CCO to administer such policies and procedures. 17 C.F.R. § 275.206(4)-7.
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`Ms. Leung administers the policies and procedures set forth in Gilead Capital’s
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`Compliance Manual and Code of Ethics (“Compliance Manual”). See Leung Decl. ¶ 19. The
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`Compliance Manual covers, among other things, portfolio management processes, disclosures to
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`investors, proprietary trading, prohibitions against insider trading, personal securities
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`transactions, conflicts of interest, safeguarding of client assets, creation and maintenance of
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`required records, privacy protections, and business continuity and disaster recovery plans. See
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`id. Thus, for example, Ms. Leung maintains a “restricted list” of securities in which neither the
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`Firm nor its employees may trade, and she pre-approves personal securities trades of employees
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`to prevent insider trading or front running. She maintains the books and records required of
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`investment advisers, such as documentation of proxy vote decisions, trade confirmations, and
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`accounting records. She reviews disclosure documents. And, she oversees trading practices
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`7
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`regulated under the Advisers Act (e.g., best execution; allocation of aggregated trades, fees, and
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`expenses among clients). See id. Ms. Leung provides legal advice on such topics, as well as on
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`other matters as they arise. See id. ¶ 20. She is also generally responsible for regulatory
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`compliance, which encompasses filing required reports (e.g., Form ADV) and other disclosures
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`relating to the Firm’s trading (e.g., Schedule 13-D and Schedule 13-G), interfacing with
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`regulators, and monitoring applicable legal developments. See id.
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`In addition, as COO/CLO, Ms. Leung is responsible for certain operational matters that
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`are part of the Compliance Manual—to wit, maintenance of books and records, retention of
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`electronic communications, administering anti-money laundering policies, and implementing
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`disaster recovery and business continuity plans. See Leung Decl. ¶ 21. Her other operational
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`roles are largely administrative. She oversees back office and middle office functions, which
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`includes the logistics of processing trades, such as providing account numbers and settlement
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`instructions to the custodian or executing brokers. See id. ¶ 22. She processes payroll, invoices,
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`and reimbursements, and she administers the firm’s 401(k) plan and other benefits. See id.
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`Opposer’s Outside Counsel
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`
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`Opposer is represented in these proceedings by Lisa Greenwald-Swire, an attorney at the
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`law firm of Fish & Richardson (“FR”). Upon information and belief, FR has a long-standing
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`attorney-client relationship with Opposer, as well as with other pharmaceutical and/or life
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`sciences companies, including but not limited to, Allergan, Biogen Inc., Genzyme Corp.
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`(SanofiGenzyme), and Repligen Corp. See Leung Decl., Ex. 5. One or more of these other
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`clients may compete with Opposer. For example, Opposer and Genzyme both develop and
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`manufacture cancer drugs, while Opposer is facing competition from Allergan in the treatment of
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`a liver disease, non-alcoholic steatohepatitis (NASH). See id., Ex. 5 at 4, 6; Ex. 6; Ex. 7.
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`PROCEDURAL HISTORY
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`
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`On November 20, 2017, the parties held their discovery conference, in which they
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`discussed the Board’s Standard Protective Order (“Protective Order”), among other issues.
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`Counsel for Gilead Capital proposed amending the Protective Order to provide for the clawback
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`of privileged documents and to omit the provisions relating to “Confidential – Attorneys’ Eyes
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`Only” (“AEO”) documents. With respect to the latter proposal, Ms. Leung explained that she is
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`representing Applicant in these proceedings and Applicant does not intend to retain outside
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`counsel. Ms. Leung also described the methods by which she could restrict access to Opposer’s
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`documents in order to prevent inadvertent disclosure to third parties, as well as to other persons
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`at Gilead Capital who do not have a need to know. Ms. Greenwald-Swire expressed generalized
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`concerns about Gilead Capital’s in-house counsel having access to AEO documents and a
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`preference for maintaining the standard Protective Order. Ms. Greenwald-Swire proposed that
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`Gilead Capital should hire outside counsel to receive AEO documents. Ms. Leung responded
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`that the proposal was impractical and burdensome because she is handling the main defense of
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`the case and restricting access to certain documents would prejudice her ability to defend Gilead
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`Capital. The parties agreed to revisit the issue after the Thanksgiving holiday. See Leung Decl.
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`¶ 23.
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`On December 12, 2017, the parties convened another teleconference, in which Ms. Leung
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`described her roles and responsibilities and requested that Opposer reconsider its position in light
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`of the additional information provided. See Leung Decl. ¶ 24. Nineteen days later, Ms.
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`Greenwald-Swire finally confirmed that Opposer would not. The parties have reached an
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`impasse, necessitating this motion.
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`9
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`ARGUMENT
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`
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`One of the fundamental purposes of a protective order is to ensure that documents
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`produced in discovery are used only in the litigation in which they are produced. Such
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`provisions protect the producing party against the possibility that, in the absence of some legal
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`process or other court order, the receiving party will share the documents of the producing party
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`with some third party. See In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010)
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`(“Typically, protective orders include provisions specifying that designated confidential
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`information may be used only for purposes of the current litigation. Such provisions are
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`generally accepted as an effective way of protecting sensitive information while granting trial
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`counsel limited access to it for purposes of the litigation.”).
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`
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`Under Federal Rule of Civil Procedure 26(c), courts may enter protective orders “for
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`good cause” “requiring that a trade secret or other confidential research, development, or
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`commercial information not be revealed or be revealed only in a specified way.” Fed. R. Civ. P.
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`26(C)(1)(G). See U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984)
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`(“Meaningful increments of protection are achievable in the design of a protective order.”).
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`Thus, in some cases, two-tiered protective orders grant heightened protection to trade secrets or
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`commercially sensitive information by prohibiting in-house attorneys of the parties from
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`accessing documents designated as “highly confidential” or “attorneys’ eyes only.” “Attorney’s-
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`eyes-only protection is usually employed to protect against business harm that would result from
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`disclosure of sensitive documents to a competitor.” Martinez v. City of Ogden, No. 1: 08
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`cv00087, 2009 WL 424785, at *2 (D. Utah Feb. 18, 2009) (emphasis added); Suture Express,
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`Inc. v. Cardinal Health, 200, LLC, No. 12-2760, 2013 WL 6909158, at *3 (D. Kan. 2013)
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`(finding good cause to enter two-tiered protective order because the parties were business
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`competitors for the sale of medical-surgical products and disclosure of proprietary information
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`“may impact each respective party’s competitive position in the marketplace”).
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`
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`The added restrictions may be warranted because disclosure to a competitor is more
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`harmful than disclosure to a noncompetitor. See American Standard Inc. v. Pfizer, Inc., 828 F.2d
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`734, 741 (Fed. Cir. 1987) (recognizing presumption of courts); Coca-Cola Bottling Co. of
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`Shreveport, Inc. v. Coca-Cola Company, 107 F.R.D. 288, 293 (D. Del. 1985) (“it is presumed
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`that disclosure to a party who is not in competition with the holder of the trade secret will be less
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`harmful than disclosure to a competitor”); United States v. United Fruit Co., 410 F.2d 553, 557
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`n.11 (5th Cir. 1986) (company would be harmed by disclosure of financial and marketing data to
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`competitors). A competitor may have the ability and the incentive to use the disclosing party’s
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`proprietary information to advance its own commercial interests. E.g., Eagle Comtronics, Inc. v.
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`Arrow Commc’n Labs., Inc., 305 F.3d 1303, 1314 (Fed. Cir. 2002) (receiving party copied
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`competitor’s patent application obtained through discovery and submitted it as own); cf.
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`Roquette Fréres S.A. v. Solazyme, Inc., No. 15-4030, 673 Fed. Appx. 219 (3d Cir. 2016) (party in
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`joint venture surreptitiously filed patent applications on its own behalf all over the world, based
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`on patent applications filed by the joint venture but with none of the other party’s employees
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`listed as inventors).
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`Whether internal counsel should be precluded from accessing trade secrets or
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`commercially sensitive information “must be determined … by the facts on a counsel-by-counsel
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`basis, and cannot be determined by giving controlling weight to the classification of counsel as
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`in-house rather than retained.” U.S. Steel Corp., 730 F.2d at 1468. “Denial or grant of access []
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`cannot rest on a general assumption that one group of lawyers are more likely or less likely
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`inadvertently to breach their duty under a protective order,” for “retained counsel often have long
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`relationships with their clients and may engage in employee-like activities.” Id. Like retained
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`counsel, in-house counsel are officers of the court, are bound by the same ethical rules, are
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`subject to the same sanctions, and face the same problem and importance of inadvertent
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`disclosure. See id. Nor is a person’s status as a corporate officer sufficient to prohibit access to
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`confidential information. See Matsushita Electric Industrial Co., Ltd. v. United States, 929 F.2d
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`1577 (Fed. Cir. 1991) (general counsel who was also senior vice-president and secretary of
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`corporation properly granted access to proprietary business information).
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`In a particular case, it may be appropriate to deny in-house counsel’s access to
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`confidential information where she is “involved in competitive decisionmaking.” U.S. Steel
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`Corp., 730 F.2d at 1468; see also TBMP § 412.02(b). This is so because where a person
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`participates in competitive decision making, there is a risk that the individual would be “unable
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`to compartmentalize the information and not use the information to seek to gain an unfair
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`competitive advantage.” Suture Express, 2013 WL 6909158 at *7. “Competitive
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`decisionmaking” is “shorthand for a counsel’s activities, association, and relationship with a
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`client that are such as to involve counsel’s advice and participation in any or all of the client’s
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`decisions (pricing, product design, etc.) made in light of similar or corresponding information
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`about a competitor.” Id. at 1468 n.3 (emphasis added). Even if a tribunal is satisfied that a risk
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`of inadvertent disclosure or competitive use exists, it “must balance this risk against the potential
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`harm to the opposing party from restrictions imposed on that party’s right to have the benefit of
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`counsel of its choice.” In re Deutsche Bank Trust, 605 F.3d at 1380.
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`Access by In-House Counsel Does Not Pose An Unacceptable Risk of Intentional
`Disclosure or Misuse of Opposer’s Trade Secret or Commercially Sensitive Information
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`
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`As a threshold matter, there is no reasonable risk of intentional disclosure or misuse of
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`Opposer’s information which would justify keeping in place the Protective Order’s provisions
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`12
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`regarding Confidential – Attorneys Eyes Only documents. Ms. Leung is an officer of the court,
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`is bound by the ethical rules applicable to attorneys, and is subject to sanctions for violation of
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`court orders. She has represented that she would not knowingly or intentionally disclose or use
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`Opposer’s information in violation of a protective order. See Leung Decl. ¶ 5. There is no basis
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`to doubt her representation. Thus, any speculation by Opposer that Ms. Leung cannot be trusted
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`with its documents should be summarily rejected.
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`Nor Does Access by In-House Counsel Pose An Unacceptable Risk of Inadvertent
`Disclosure or Misuse of Opposer’s Trade Secret or Commercially Sensitive Information
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`
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`Likewise, permitting Ms. Leung to have access to Opposer’s trade secret and
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`commercially sensitive information does not pose an unacceptable risk of inadvertent disclosure
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`or misuse. Ms. Leung has the experience and ability to implement procedures and controls to
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`keep Opposer’s documents secure. She was formerly a litigation partner at a large New York
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`law firm, and over the course of 15 years, has managed numerous cases, involving terabytes of
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`data, including documents containing highly confidential commercial information, as well as
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`highly sensitive non-public personal information. See Leung Decl. ¶¶ 2-3. She has worked
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`closely with e-discovery vendors, litigation support staff, and copy services in connection with
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`document discovery, and has complied with protective orders without incident. See id. ¶ 3.
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`Furthermore, she has begun implementing safeguards for documents produced in these
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`proceedings. Gilead Capital has retained a professional e-discovery services firm, which is also
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`willing and able to comply with any applicable protective order. See id. ¶ 4. The e-discovery
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`firm, as well as any other expert, consultant, non-party witness, or other individual not
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`specifically covered, will be required to sign onto the Protective Order before being afforded
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`access to confidential information. Opposer’s documents will be maintained on secure servers
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`that are separate from those used by Gilead Capital for its business, and access will be restricted
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`to prevent unauthorized access by third parties or business persons within Gilead Capital. See id.
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`¶ 5. Thus, the risk of unauthorized access to Opposer’s confidential information is extremely
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`low.
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`Furthermore, Opposer lacks good cause to restrict Ms. Leung’s access to its trade secret
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`and commercially sensitive information because she is not involved in competitive decision-
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`making and precluding her from accessing all information in the case would prejudice her ability
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`to defend Gilead Capital in violation of Applicant’s due process rights.
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`First and foremost, Ms. Leung is not involved in competitive decision making because
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`the parties are not competitors, and she cannot (mis)use any of Opposer’s information to obtain
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`unfair competitive advantage. Gilead Capital is an investment management firm, whereas
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`Opposer is a pharmaceutical company. They do not provide goods or services in the same
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`markets. Gilead Capital provides investment services to certain institutional investors and high
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`net worth individuals. Opposer sells pharmaceutical goods to wholesale distributors of drugs.
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`Indeed, Opposer states that its competitors are large global pharmaceutical and biotechnology
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`companies, specialized pharmaceutical firms, and generic drug manufacturers, and identifies
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`many of them by name. See generally United States v. E.I. du Pont de Nemours and Co., 76
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`S.Ct. 994, 1006 (1956) (discussing whether a competitive market exists for a product,
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`considering such factors as how different commodities are from one another and how far buyers
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`will go to substitute one commodity for another); Merriam-Webster Dictionary (defining
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`“competitor” as “one selling or buying goods or services in the same market as another”). Given
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`that Gilead Capital does not participate—let alone compete in—the same market as Opposer,
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`Ms. Leung does not make competitive decisions vis-à-vis Opposer.
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`This conclusion becomes even clearer when one considers the questions: What decisions
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`could she possibly make while in possession of Opposer’s confidential information that would
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`result in transferring market share from Opposer to Gilead Capital? Are the parties subject to the
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`same regulatory regime (e.g., rules promulgated under the Investment Advisers Act)? If Opposer
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`competes in the market for investment services, why isn’t it a material omission for Opposer not
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`to disclose it in its public filings or to identify other investment management firms as its
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`competitors? Would Opposer be harmed more by disclosure of its information to Ms. Leung or
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`to its counsel’s other pharmaceutical/life sciences clients?
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`Because the rationale behind the attorneys’-eyes-only restriction is inapplicable, the
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`Protective Order should be modified to remove the AEO provisions. See MGP Ingredients, Inc.
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`v. Mars, Inc., 245 F.R.D. 497, 500 (D. Kan. 2007) (holding that two-tiered protective order to
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`restrict in-house attorneys or patent agents from viewing “highly confidential information” was
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`not warranted where the parties were not direct competitors); Intervet, Inc. v. Merial Ltd., 241
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`F.R.D. 55 (D.D.C. 2007) (entering protective order that did not preclude in-house counsel from
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`accessing all materials in discovery because she was not a competitive decision-maker); Volvo
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`Penta of the Americas, Inc. v. Brunswick Corp., 187 F.R.D. 240, 242 (E.D. Va. 1999)
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`(competitive decision-making involves decisions that affect contracts, marketing, employment,
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`pricing, product design and other decisions made in light of similar corresponding information
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`about a competitor); Glaxo Inc. v. Genpharm Pharm, Inc., 796 F. Supp. 872, 876 (E.D.N.C.
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`1992) (improper to preclude in-house counsel from access to confidential information because he
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`gave no advice to his client about competitive decisions such as pricing, scientific research,
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`sales, or marketing); cf. In re Deutsche Bank Trust, 605 F.3d at 1381 (party seeking imposition
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`of a patent prosecution bar must show that the information designated to trigger the bar, the
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`scope of activities prohibited by th