United States District Court, D. New Jersey
TONIANNE J. BONGIOVANNI UNITED STATES MAGISTRATE JUDGE.
before the Court is Defendant Mileutis Ltd.'s
(“Defendant”) motion for reconsideration of the
Court's December 22, 2017 Order (Docket Entry No. 55)
allowing Plaintiff Intervet, Inc. (“Plaintiff”)
to disclose to its in-house counsel Defendant's documents
marked attorneys' eyes only (“AEO”). (Docket
Entry No. 58). Plaintiff opposes Defendant's motion.
(Docket Entry No. 59). The Court has reviewed all arguments
raised in support of and in opposition to Defendant's
motion. The Court considers Defendant's motion without
oral argument pursuant to L.Civ.R. 78.1(b). For the reasons
stated more fully below, Defendant's motion is DENIED.
the parties and Court's familiarity with this matter, the
Court does not restate the facts of same at length herein,
but instead focuses only on those relevant to the
determination of the motion for reconsideration.
is asking the Court to reconsider Its December 22, 2017 Order
(the “Order”) in which it entered a Discovery
Confidentiality Order which allowed Plaintiff to disclose to
its in-house counsel Defendant's documents marked AEO.
(Docket Entry No. 55). Defendant states that the Order
creates new law in this District and is manifestly unjust.
(Def.'s Br. in Supp. of Mot. at 1). Defendant argues the
sensitivity of Defendant's AEO documents is heightened in
this case because the confidential information at issue
concerns a multi-billion dollar product and disclosure of
these documents to its competitor will cause an irreversible
harm. (Id.) Defendant notes that “neither any
sworn statements were submitted with counsel's letter nor
even an unsworn representation as to whether Ms. Litvin
performs any business-decision functions for Merck.”
(Id. at 3). Defendant contends that Plaintiff's
counsel failed to set forth a basis for its request other
than the claim that Ms. Litvin is necessary to aid in
management of the litigation. (Id.).
argues that this Court's Order granting Plaintiff's
in-house counsel full access to Defendant's documents
marked AEO on the basis of its outside attorney's
conclusory statements made in a letter to the Court creates
new law in the District. (Id. at 5). Defendant
states that AEO documents are not provided to the
adversary's in-house counsel as a matter of standard
practice. (Id.). Defendant cites to
Sanofi-Aventis U.S. LLC v. Breckenridge Pharm.,
Inc., No. 15-cv-0289, 2016 WL 308795, at *3 (D.N.J.
January 25, 2016) in which the District Court conducted a
two-part test that it adopted from the Federal Circuit.
(Id. at 6). The Court first determined whether an
unacceptable opportunity for disclosure exists and second, it
balanced the risk of disclosure against the potential harm to
the opposing party from “restrictions imposed on that
party's right to have the benefit of counsel of its
choice.” (Id. (internal quotation marks and
citations omitted)). Defendant notes that the Court conducted
this analysis on the basis of a sworn statement, not blanket
representations of counsel made in a joint letter.
(Id.). Defendant states that the Court could not
have conducted this two-part test because no sworn statements
were submitted to the Court. (Id. at 7). Defendant
further states that there is not even an unsupported
representation as to whether Ms. Litvin is involved in
competitive health decision making for Merck. (Id.).
Defendant argues that it is entitled to know if Ms. Litvin is
involved in competitive decision making for Merck, and
Defendant is entitled to have all information submitted in
support of Plaintiff's request to share this highly
confidential information by way of a sworn declaration as
opposed to an attorney's conclusory statement.
(Id. at 8).
Defendant states that there are no decisions in this District
where courts have allowed inside counsel access to sensitive
competitive information without first imposing restrictions
on their use. (Id.). Defendant notes that in the
only case in this District to decide this issue, the Court
did not grant in-house counsel access to AEO documents
without restriction and that the in-house counsel submitted a
sworn statement. (Id. at 9 citing
Sanofi-Aventis, at *3).
Defendant submitted a recently decided case in which the
United States Court of Appeals affirmed a finding of unclean
hands as to Merck's in-house legal department.
(Def.'s 5/1/18 Letter to the Court citing Gilead
Sciences, Inc. v. Merck & Co., Inc., 2018 WL 1936686
(Fed. Cir. April 25, 2018). Defendants argue that this case
supports its motion because it “underscores the
importance of barring disclosure of [Defendant's] highly
confidential documents to anyone who works internally at this
particular company, Merck, including its in-house
argues that the Court should not reconsider its decision
because Defendant has failed to show a change in law, a
change in the facts, or an error that would lead to manifest
injustice. (Pl's Br. in Opp'n at 3). Plaintiff
asserts that Defendant simply reargues the points that it
asserted in the parties' joint letter. (Id. at
Plaintiff argues that Defendant does not provide any support
for the alleged need for maximum security that is the premise
of its motion. Plaintiff states that not only does Defendant
fail to explain how Ms. Litvin's review of relevant
discovery designated AEO would work a “clearly defined
and serious injury”, it does not describe the
information that it seeks to protect with any specificity.
(Id. at 7 citing Pansy v. Borough of
Stroudsburg, 23 F.3d 772, 786 (3d Cir. 1986)). Plaintiff
states that Defendant repeatedly describes the AEO documents
as highly confidential without further description.
(Id.). Plaintiff asserts that there is no
multi-billion dollar secret product and that even if there
were any secrets about casein hydrolysate, the preparation in
question, or the hypothesis that this preparation could be
used to treat mastitis, Plaintiff is already familiar with
them, as it worked on the formulation and testing of the
substance for years. (Id. at 1).
further argues that “denial of access to confidential
information by in-house counsel should not be premised solely
on their status as in-house counsel.” (Id. at
8 (internal quotation marks and citations omitted). Plaintiff
notes that under the two-part analysis set forth in U.S.
Steel, both parts of the analysis weigh in favor of
permitting Ms. Litvin to review AEO material. (Id.
at 9). Plaintiff argues that the risk of inadvertent
disclosure is near zero as Ms. Litvin does not participate in
Intervet's pricing or product decisions or any other form
of competitive decision making at Intervet. (Id.).
Plaintiff notes that Ms. Litvin does not work for Intervet,
but works for its corporate parent, Merck. (Id.).
Plaintiff further points out that “Ms. Litvin is not
involved in any animal health business decisions by any
company.” (Id.). In addition, Plaintiff notes
that no one other than Ms. Litvin possesses her computer
password and no one at Intervet has access to her e-mail or
electronically stored files because those items are also
password-protected. (Id. at 10).
Defendant's contention that the recently decided
Gilead case supports its motion, Plaintiff states
that “[Defendant's] argument that a factual finding
against a single Merck patent attorney means that an entire
in-house legal department cannot be trusted to adhere to the
standards of their profession is both ridiculous and
offensive.” (Pl.'s 5/4/18 Letter to the Court at
Plaintiff notes that since Defendant was not satisfied with a
signed letter to the court, they have provided a signed
declaration from Ms. Litvin affirming their representations.
(Pl's Br. in Opp'n at 2).