Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1031138
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`Filing date:
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`01/24/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91233311
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`Party
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`Correspondence
`Address
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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
`kanchana@gileadcapital.com
`646-693-6372
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Reply in Support of Motion
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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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`01/24/2020
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`Attachments
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`2020-01-24 Reply Brief ISO Cross-Motion for Sanctions.pdf(257043 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 REPLY BRIEF
`IN SUPPORT OF ITS CROSS-MOTION FOR SANCTIONS
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`I.
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`Opposer Violated the Board’s Order
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`The relevant facts are undisputed. Opposer moved to compel on the specific topics of the
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`dates on which Applicant first provided its services, the dates on which it obtained its
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`registrations, and the identity of its investors. The Board denied discovery, finding that such
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`issues were not relevant. Opposer did not move for reconsideration. Instead, Opposer’s counsel
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`asked Applicant’s managing partner more than thirty direct questions on the prohibited topics.
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`Opposer’s counsel made misrepresentations to the witness and threatened his attorney. Opposer
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`did so without justification. 55 TTABVUE 4-10.
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`Opposer’s response that its conduct was “consistent with the Board’s orders” because it
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`could take testimony on Topic No. 8 and from Mr. Strong as a percipient witness does not pass
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`the straight face test. Topic No. 8 was the “manner in which Applicant has provided each of
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`Applicant’s services in U.S. commerce.” In granting discovery on Topic No. 8, the Board
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`explained that it requested “information on how Applicant provides its services to its customers.”
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`41 TTABVUE 12 (emphasis added). The plain and ordinary meaning of “manner” does not
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`include when services were rendered, when a party obtains registrations, or to whom services
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`were provided. If it did, there would have been no need for Opposer to separately identify and
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`move to compel on Topic No. 7 (dates of service), Topic No. 13 (dates of registrations), or
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`Interrogatory No. 16 (identity of investors). In reality, Opposer did not even explore Topic No.
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`8, as Mr. Farrell did not ask any questions about Gilead Capital’s investment process.
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`More importantly, however, a party cannot evade an order of the Board by doing
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`indirectly what it is prohibited from doing directly. Opposer cannot shoehorn its questions into a
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`more general topic after the specific topic was denied, nor can it take discovery from a Rule
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`30(b)(1) witness on issues that were already held to be irrelevant. See Fed. R. Civ. P. 26(b)(1)
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`(scope of discovery limited to matters that are relevant to claim or defense). Opposer tries to use
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`Rule 30(b)(1) as both a sword and a shield—simultaneously imputing a layperson’s testimony
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`regarding dates of first service to the entity while also arguing that he was just being examined as
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`a percipient witness.1 Acceptance of Opposer’s argument would create a glaring loophole for
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`1 Because the Board denied discovery on Topic Nos. 7 and 13, Applicant was not obligated to prepare Mr. Strong to
`give testimony that would bind Gilead Capital on those topics and it should not be so bound. Even on proper Rule
`30(b)(6) deposition topics, Opposer’s counsel improperly blurred the lines and would not allow Mr. Strong to
`consult reference materials—copies of which were provided to Opposer’s counsel at the deposition—in order to give
`accurate answers on behalf of Applicant. As a result, Mr. Strong occasionally had to go back on the record to
`amend testimony because his recollection was not accurate. 52 TTABVUE 171-172, 287, 301-302 (Strong Tr.
`122:17-123:4) (not permitted to consult copy of privilege log to respond to questions regarding trademark clearance
`search); Strong Tr. 238:16-22 (same); Strong Tr. 252:23-253:6 (correcting testimony); 41 TTABVUE 6 (Board
`order that Applicant amend its privilege log to clarify whether the withheld documents were counsel’s recordings
`based on the trademark search of her own thoughts and communicating legal advice to her client, and to identify the
`source material used for any search conducted, and which search results were recorded). A corporate designee may
`be educated on a topic; a Rule 30(b)(6) deposition is not a memory test of a fact witness.
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`2
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`evading Board orders any time there was a dual-capacity witness. This is not and cannot be the
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`law.
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`Furthermore, Applicant did not waive its objections or otherwise concede the propriety of
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`Opposer’s questions, and Opposer’s arguments to the contrary amount to pure gaslighting. In
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`addition to repeated objections that Opposer had lost its motion to compel, the record is replete
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`with Applicant’s relevance and scope objections—which are typical objections in fact witness
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`depositions—including in the very passage quoted by Opposer in its argument that Applicant
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`objected “on a 30(b)(6) basis only.” 57 TTABVUE 7. Applicant’s objections regarding
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`relevance and materiality would be preserved even without its counsel specifically stating so on
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`the record. See Fed. R. Civ. P. 32(d)(3)(A). Opposer has an obligation to comply with Board
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`orders and cannot shift the burden to Applicant to expend resources combatting Opposer’s non-
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`compliance.
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`II.
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`Opposer’s Violations Were Done in Bad Faith
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`Opposer argues that it should not be sanctioned because there was “no bad faith by
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`Gilead [Sciences].” 57 TTABVUE 8. That claim is flatly contradicted by the record.
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`Opposer’s violations of the Discovery Order are neither justified nor excusable. The
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`Order was not ambiguous. Mr. Farrell did not mistakenly ask an errant question or two. He
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`asked over thirty questions on denied topics. He used 20% of his questioning time to do so. He
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`made false statements to the witness and threatened to go after Applicant’s counsel for a follow
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`up deposition. He did so with the approval or acquiescence of Opposer’s in-house counsel, Jack
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`Wessel, who was present. Opposer tries to whitewash its conduct by proclaiming that
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`Opposition proceedings “are, by their nature, adversarial” and that it comported with the Federal
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`Rules of Civil Procedure, the TBMP, and the Board’s orders. 57 TTABVUE 8. However,
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`intentionally disregarding an order, making false statements to a witness, and threatening
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`opposing counsel is conduct that falls well outside the bounds of zealous advocacy and should
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`not be tolerated.
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` When viewed in the context of Opposer’s long history of trying to construct a baseless
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`fraud claim against Applicant and misleading the Board about the improper purpose of its
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`discovery requests, Mr. Farrell’s questioning of Mr. Strong on the denied topics can only be
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`viewed as the utmost bad faith. Opposer’s motion practice shows that Opposer’s non-
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`compliance was part of an intentional strategy to fish for information about Gilead Capital’s
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`trademark applications in order to assert a fraud claim that would fit within the frameworks of In
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`re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009)—in which Fish & Richardson was counsel—and
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`Nationstar Mortgage LLC v. Ahmad, 112 U.S.P.Q.2d 1361 (TTAB 2014).
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`In its first motion to compel, Opposer argued that it needed discovery regarding the dates
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`of first service and Applicant’s registration with the SEC because priority was a core issue in the
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`case—even though Applicant had already conceded priority. 28 TTABVUE 8. After the Board
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`rejected that pretextual argument, Opposer tried again. If it could not get discovery to plead a
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`plausible fraud claim, Opposer would try to persuade the PTO to deny registration of Applicant’s
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`marks sua sponte so that it would not have to prove its claims at all. Although Opposer asserts
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`that its second “motion to compel” was warranted by Mr. Strong’s changes to his testimony, that
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`claim is belied by the fact that Opposer laid the groundwork for the motion weeks before he
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`served his errata sheet.2 In its moving brief here, Opposer argued that it needed the requested
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`documents “to determine whether [Gilead Capital’s] Applications may be false.” 52
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`2 Opposer sent letters “requesting” that Applicant produce “documents sufficient to show that it was actually
`providing all of the services listed in the applications” as of the claimed use date, on October 24, 2019 and
`November 4, 2019. 52 TTABVUE 316-320, 322. Mr. Strong submitted his signed corrections to the transcript and
`certification on November 18, 2019. 52 TTABVUE 332-343.
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`TTABVUE 3 (emphasis added). In its reply brief, however, Opposer momentarily drops the
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`pretense of needing documents or testimony and directly argues that Gilead Capital’s
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`Applications are false, based on (misinterpreted) publicly available information and SEC
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`documents that have been in its possession for years. 57 TTABVUE 3. Furthermore, before
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`Opposer withdrew its deposition notice of Applicant’s counsel, Opposer argued in response to a
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`motion to quash that Ms. Leung’s knowledge was “central to the oppositions” because she
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`signed the “declarations regarding use” and has knowledge about “the specimens of use
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`submitted with the applications”—without explaining how such issues are relevant to its
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`likelihood of confusion or false association claims. 35 TTABVUE 2, 7. They are not.
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`Declarations of use and use specimens were at issue, however, in the fraud claims in In re Bose
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`and Nationstar Mortgage. Opposer persists in trying to argue the merits of an unpled claim,
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`despite the Board already holding that “topics related to Applicant’s use of its marks and
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`compliance with regulations relating to its services are not at issue in the proceeding.” 41
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`TTABVUE 18.
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`Applicant will not address all of Opposer’s misrepresentations, which are easily
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`disproved, or its many references to irrelevant matters. However, the fact that Opposer
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`repeatedly makes false statements to the Board in its responsive brief about the role of the SEC
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`and Applicant’s legal authority to do business also supports a finding that Opposer’s violation of
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`the Discovery Order was willful and done in bad faith.3 The SEC does not license or approve
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`investment advisers, and it is unlawful for registered investment advisers to make such a
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`3 57 TTABVUE 2 (falsely stating that “the effective registration date with the SEC” is “the date that the SEC
`permitted Applicant to operate its hedge fund”); 57 TTABVUE 4 (falsely arguing that “Applicant filed its
`application to the Securities and Exchange Commission on January 15, 2016, seeking approval to provide the
`applied-for investment services on the same day Applicant claims to have already rendered those investment
`services in its trademark applications”); 57 TTABVUE 5 (falsely arguing that “Applicant Gilead Capital’s
`registration with the SEC was not effective until January 27, 2016, so it was not legally able to render services.”)
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`representation. See 15 U.S.C. §80b-8 (“It shall be unlawful for any person registered under
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`Section 203 of this title to represent or imply in any manner whatsoever that such person has
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`been sponsored, recommended, or approved, or that his abilities or qualifications have in any
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`respect been passed upon by the United States or any agency or any officer thereof.”)
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`(emphasis added). Given that Applicant is prohibited from making such a claim, it is at least
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`sanctionable conduct for Opposer to do so to the Board—especially after being directed to legal
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`authority disputing that assertion in prior briefing.4 Opposer’s reply shows neither reason nor
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`remorse.5
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`4 Applicant reiterates the concerns it previously expressed in response to Opposer’s first motion to compel:
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`[I]n its Motion to Amend the Notice of Opposition, Opposer falsely implied that its additional allegations
`regarding the date of Applicant’s SEC registration is relevant to “use in commerce”…It is not. The SEC
`does not grant permission to provide investment advisory services. Registration with the SEC subjects
`the registrant to regulation but does not signify legal authority to [do] business. Not all investment
`advisers are required to register (e.g., exempt reporting advisers), see 15 U.S.C. §§ 80b-3(1), 80b-3(m),
`and in fact, some are prohibited from registering with the SEC unless they meet certain assets under
`management requirements. See 17 C.F.R. § 275.203A-1. 35 TTABVUE 11 (emphasis and citations in
`original).
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`Opposer’s current motion validates Applicant’s concerns that Opposer is trying to mislead the Board and
`trap witnesses into mistaken testimony about complicated areas of securities law and regulation, which
`are outside the scope of this trademark dispute… Opposer would turn this straight-forward Opposition
`into a “legal authority” side show, in which Applicant would be forced to repeatedly rebut Opposer’s
`misstatements and which could open the door to privileged matters, such as Applicant’s good faith
`reliance on the advice of its counsel. 35 TTABVUE 11-12 (emphasis added).
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` 57 TTABVUE 5-6. Opposer’s feigned concern for the integrity of the trademark registration process is wholly
`disingenuous, considering that the United States believes that Opposer is the party that applies for trademarks when
`it is not legally able to provide the products and services that are the subject of the applications. The United States is
`suing Opposer for patent infringement, alleging that while Gilead Sciences willfully infringed the CDC’s patents for
`pre-exposure prophylaxis (PrEP) regimes to prevent new HIV infections, it simultaneously sought trademark
`protection for TRUVADA FOR PREP and DESCOVY FOR PREP well after the Government provided Opposer
`with notice of the Patents-in-Suit and attempted to negotiate with Opposer to take a license. See United States v.
`Gilead Sciences, Inc., No. 1:19-cv-02103-MN, D. Del., Nov. 6, 2019, Complaint ¶¶ 249-252. The Complaint alleges
`as further evidence of Gilead Sciences’ intentional infringement that Opposer has obtained a trademark for Truvada
`for PrEP, has applied for trademark protection for the phrase “Step Up. PrEP Up.” for use in providing medical
`information about HIV/AIDS, and has applied to trademark blue, oblong tablets for “PrEP preparations for
`prevention and risk mitigation of contracting HIV.” Id. ¶ 261.
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`III. Opposer Should Be Sanctioned
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`Accordingly, sanctions against Opposer and its counsel are warranted under the Board’s
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`rules and inherent authority in order to punish and deter non-compliance. If a party fails to
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`comply with an order of the Board relating to discovery, “the Board may make any appropriate
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`order, including those provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except
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`that the Board will not hold any person in contempt or award expenses to any party . . . .” TBMP
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`527.01(a)(1). “The sanctions that may be entered by the Board include, inter alia, striking all or
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`part of the pleadings of the disobedient party; refusing to allow the disobedient party to support
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`or oppose designated claims or defenses; prohibiting the disobedient party from introducing
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`designated matters in evidence; and entering judgment against the disobedient party.” Id.
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`“[C]onduct in violation of the Disciplinary Rules set forth in 37 C.F.R. Part II may be referred to
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`the Office of Enrollment and Discipline for appropriate action.” TBMP 502.05. Furthermore,
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`“[f]lowing from the Board’s inherent authority to manage the cases on its docket is the inherent
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`authority to enter sanctions against a party.” TBMP 527.03.
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`At a minimum, it is appropriate to sanction Opposer by specifically prohibiting Opposer
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`from asking any questions, supporting its claims, and from introducing into evidence, each of the
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`matters for which the Board denied discovery in its August 7, 2019 Order because the sanction
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`relates directly to the Order that was violated. More of a sanction is needed, however, because
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`such an order is not punishment, but merely reaffirms the status quo. The Board already ruled
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`that the denied discovery was not relevant to the pending claims or defenses; therefore,
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`information about Applicant’s use in commerce would be inadmissible during trial. Fed. R.
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`Evid. 402 (“Irrelevant evidence is not admissible.”). Opposer would have lost nothing with its
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`gambit of intentionally disobeying the Board’s Order if the sanction were limited to the
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`preclusion of evidence.
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`In order to punish and deter, monetary sanctions could be awarded under the Board’s
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`inherent authority for Opposer’s bad faith conduct. See Chambers v. NASCO, Inc., 111 S. Ct.
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`2123, 2133 (1991) (court is not forbidden “to sanction bad-faith conduct by means of the
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`inherent power simply because that conduct could also be sanctioned under the statute or the
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`Rules”; if neither statute nor rules are up to the task of adequately sanctioning a party’s bad-faith
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`conduct, a court may “vindicat[e] judicial authority without result to the more drastic sanctions
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`available for contempt of court and mak[ing] the prevailing party whole for expenses caused by
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`his opponent’s obstinacy”). Applicant suggested fines because they are pecuniary punishment
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`paid to the PTO, rather than a fee, expense, or damages paid to a party.
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`However, Applicant requested, more broadly, that the Board “issue another appropriate
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`sanction to deter any future non-compliance.” 55 TTABVUE 2. In this case, Opposer’s conduct
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`throughout the proceedings and its attorneys’ myriad misrepresentations to the Board in
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`connection with the requested discovery—including in its latest reply brief—constitutes
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`violations of the USPTO’s Rules of Professional Conduct. The bad faith conduct described in
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`Part II, supra, violated counsel’s duty not to assert meritless claims and contentions, duty of
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`candor to the Board, and duty of fairness to opposing counsel. 37 C.F.R. §§ 11.301, 11.303,
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`11.304.6 As such, another appropriate sanction would be for the Board to exclude from these
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`proceedings Mr. Farrell, as punishment for his conduct at Mr. Strong’s deposition, as well as to
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`6 37 C.F.R. § 11.301 (“A practitioner shall not…assert or controvert an issue therein, unless there is a basis in law
`and fact for doing so that is not frivolous”), 37 C.F.R. § 11.303(a) (“A practitioner shall not knowingly (1) Make a
`false statement of fact or law to a tribunal or fail to correct a false statement of material fact or law previously made
`to the tribunal by the practitioner”), 37 C.F.R. § 11.304 (“A practitioner shall not…(c) Knowingly disobey an
`obligation under the rules of a tribunal….(e) In a proceeding before a tribunal, allude to any matter that the
`practitioner does not reasonably believe is relevant or that will not be supported by admissible evidence…”).
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`exclude the attorneys who signed and attested to the false statements in Opposer’s briefs. Or, the
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`Board could refer Opposer’s attorneys to the Office of Enrollment and Discipline for appropriate
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`action under TBMP 502.05. Such sanctions would be serious enough to deter future non-
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`compliance and would not otherwise prejudice Opposer because Ms. Greenwald-Swire has been
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`the partner representing Opposer in these proceedings since the inception of the case.
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`CONCLUSION
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`For the reasons set forth above and in Applicant’s moving brief, Opposer should be
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`sanctioned for its willful and bad faith violations of the Board’s Discovery Order. Applicant
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`relies on the sound discretion of the Board to make an appropriate order.
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`Dated: January 24, 2020
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`New York, New York
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`Respectfully submitted,
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` /Kanchana Wangkeo Leung/
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`Kanchana Wangkeo Leung
`GILEAD CAPITAL LP
`157 Columbus Ave. #403
`New York, NY 10023
`Tel.: (646) 693-6372
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`CERTIFICATE OF SERVICE
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`I hereby certify that I caused a copy of APPLICANT GILEAD CAPITAL’S REPLY
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`BRIEF IN SUPPORT OF ITS CROSS-MOTION FOR SANCTIONS to be served by email on
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`this 24th day of January, 2020 upon Opposer’s attorney, Lisa Greenwald-Swire, Fish &
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`Richardson, P.C., P.O. Box 1022, Minneapolis, MN 55440-1022, at tmdoctc@fr.com,
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`TrademarkGroup-SV@fr.com.
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`/Kanchana Wangkeo Leung/
`Kanchana Wangkeo Leung
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`10
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