UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
`
`In the Matter of
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`CERTAIN LIGHT-BASED
`PHYSIOLOGICAL MEASUREMENT
`DEVICES AND COMPONENTS
`THEREOF
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` Inv. No. 337-TA-1276
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`ORDER NO. 7:
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`GRANTING RESPONDENT’S MOTION TO PRECLUDE
`STEPHEN JENSEN FROM ACCESS TO CONFIDENTIAL
`BUSINESS INFORMATION UNDER THE PROTECTIVE ORDER
`WHILE SERVING ON COMPLAINANT’S BOARD OF
`DIRECTORS
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`(November 18, 2021)
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`On September 2, 2021, Respondent Apple Inc. (“Apple”) filed a motion (1276-001) to
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`preclude Stephen Jensen from accessing Apple’s confidential business information under the
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`protective order (the “Motion” with a Memorandum in Support (“Memo.”), EDIS Doc ID
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`750872). Complainants Masimo Corporation (“Masimo”) and Cercacor Laboratories, Inc.
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`(“Cercacor”) (collectively, “Complainants”) filed a response in opposition to the motion on
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`September 13, 2021 (the “Opposition,” EDIS Doc ID 751567). Apple filed a motion (1276-002)
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`for leave to file a reply in support of the motion on September 22, 2021 (the “Reply,” EDIS Doc
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`ID 752455). Complainants filed a response in opposition to the motion for leave on September
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`27, 2021 (the “Reply Opp.,” EDIS Doc ID 752732).1
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`1 The motion for leave to file a reply (1276-002) is hereby GRANTED to allow Apple to respond to
`facts that were raised in declarations attached to Complainants’ Opposition. In addition, the
`replacement Ground Rules issued after the present motion was filed permit reply briefs for non-
`discovery-related motions. See Ground Rule 3.7, Order No. 4 at 8 (Sept. 22, 2021).
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`PUBLIC VERSION
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`I.
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`BACKGROUND
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`Stephen Jensen is a partner in the law firm of Knobbe, Martens, Olson & Bear, LLP and
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`is counsel of record for Complainants. Opposition, Jensen Decl. ¶ 1. He has represented
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`Masimo in patent-related matters since 1994. Id. ¶ 4. He has represented Cercacor in patent-
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`related matters since 2008. Id. at ¶ 7. In 2013, Mr. Jensen joined the Board of Directors for
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`Cercacor. Id. ¶ 13. Masimo owns four of the asserted patents in this investigation, and Cercacor
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`owns one of the asserted patents. Amended Complaint ¶ 4, EDIS Doc ID 746186 (July 7, 2021).
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`The Protective Order issued in this investigation on August 18, 2021, authorizing
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`disclosure of confidential business information to specific limited categories of individuals,
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`including “outside counsel for parties to this investigation, including necessary secretarial and
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`support personnel assisting such counsel.” Order No. 1 at ¶ 3.
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`Stephen Jensen and nineteen other attorneys from Knobbe, Martens, Olson & Bear, LLP
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`entered an appearance on behalf of Complainants on August 19, 2021. Complainants’ Notice of
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`Appearance, EDIS Doc ID 749996 (Aug. 19, 2021). On that same date, eleven of these
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`attorneys, including Mr. Jensen, submitted a letter agreeing to be bound by the terms of the
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`Protective Order. Complainants’ Protective Order Acknowledgements, EDIS Doc ID 750000
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`(Aug. 19, 2021).2 Apple immediately objected to Mr. Jensen’s subscription to the Protective
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`Order and filed the present motion after conferring with Complainants and failing to reach a
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`resolution. See Motion Exhibit E (letter dated Aug. 20, 2021).
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`II.
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`LEGAL STANDARDS
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`Leading authorities concerning the protective order issues raised here include the
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`Commission’s opinion in Certain Rotary Wheel Printers, Inv. No. 337-TA-145, Comm’n Op., 5
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`2 The remaining attorneys subscribed to the Protective Order by September 7, 2021. Complainants’
`Protective Order Acknowledgements, EDIS Doc ID 751035 (Sept. 7, 2021).
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`PUBLIC VERSION
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`ITRD 1933 (Nov. 4, 1983) (“Rotary Wheel Printers”), available on Bloomberg Law; and the
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`Federal Circuit’s decisions in U.S. Steel Corp. v. U.S., 730 F.2d 1465 (Fed. Cir. 1984) (“U.S.
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`Steel”) and Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471 (Fed. Cir. 1986) (“Akzo”).
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`In Rotary Wheel Printers, the Commission considered whether certain counsel should be
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`granted access to confidential information under a protective order in a Section 337
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`investigation. The counsel at issue were in-house counsel at the parent corporation (ITT) of the
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`complainant (Qume). Rotary Wheel Printers, at 3. Based on the close relationship and degree of
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`control, the Commission found that the ITT attorneys were “properly viewed as in-house counsel
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`for Qume” (id. at 7) and that they were “involved in business decisions” of Qume based, inter
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`alia, on the fact that one of the ITT attorneys was “also an Assistant Secretary” of complainant,
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`and that other ITT attorneys “monitor and control the patent and related litigations” for
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`complainant (id. at 3). The Commission noted that in Title VII investigations at the time, the
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`Commission had implemented an “absolute bar to in-house counsel access” because “the
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`Commission is heavily dependent on the voluntary submission of information to be able to fulfill
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`its statutory responsibilities,” and recognized that “the scope of the information released to
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`opposing counsel is far more extensive in section 337 investigations than in Title VII
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`investigation, thereby making the need for protection of confidential information in section 337
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`investigations even greater.” Id. at 2-3.
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` In determining whether to provide access, the Commission approved a balancing test “to
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`determine whether, to whom, and under what conditions to release confidential information.” Id.
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`at 4. The Commission stated that this involves weighing “the party’s need for the confidential
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`information sought in order to prepare its case adequately against the harm that disclosure would
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`cause the party submitting the information, and where appropriate, the forum’s interest in
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`maintaining the confidentiality of the information sought.” Id. at 4; see also id. (“the inquiry that
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`must be made in reaching a determination to release confidential information under protective
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`order is whether the need for the information sought outweighs the harm to the party submitting
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`the information, and to the agency concerned.”). The Commission recognized its need to “obtain
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`confidential information in the future in order to carry out its administrative responsibilities
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`effectively.” Id. at 4. The Commission further determined that for in-house counsel involved in
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`complainant’s “business decisions,” it would be “difficult if not impossible, in formulating
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`advice on one matter, to eradicate the knowledge gained under the protective order on another.”
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`Id. at 6. In light of these considerations, the Commission precluded the in-house counsel from
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`subscribing to the protective order based on a lack of a sufficient showing by complainant
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`regarding need. Id. at 4, 6-7.
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`A year later, in U.S. Steel, the Federal Circuit considered the framework for evaluating
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`counsel’s access to confidential information under a protective order entered by the Court of
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`International Trade (CIT) in litigation involving a negative preliminary injury determination by
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`the Commission. See U.S. Steel, 730 F.2d at 1466. There, the Federal Circuit vacated the Court
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`of International Trade’s per se rule precluding in-house counsel from accessing confidential
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`information. Id. at 1469. The Federal Circuit stated that it was improper to deny access to in-
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`house counsel based solely on status as “in-house,” and that “the factual circumstances
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`surrounding each counsel’s activities, whether counsel be in-house or retained, must govern any
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`concern for inadvertent or accidental disclosure.” Id. at 1468. The Federal Circuit stated that
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`appropriate circumstances for exclusion might exist, “e.g., where in-house counsel are involved
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`in competitive decisionmaking,” which the Court characterized as “counsel’s advice and
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`participation in any or all of the client’s decisions (pricing, product design, etc.) made in light of
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`similar or corresponding information about a competitor.” 730 F.2d at 1468 and n.3. The
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`Federal Circuit also took into account the need for the in-house counsel at issue to have access to
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`the confidential information, noting that the litigation was “extremely complex and at an
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`advanced stage,” and that a requirement “to rely on newly retained counsel would create an
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`extreme and unnecessary hardship.” Id. at 1468.
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`In so holding, the Federal Circuit noted that its ruling did not directly apply to the
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`Commission given the administrative agency’s potentially distinct interests regarding the
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`protection of confidential information. See id. at 1468 (“Our decision here bears no relation to,
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`and can have no effect on, ITC’s rule establishing a per se ban on disclosure to in-house counsel
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`in its administrative proceedings. That rule is not before the court. The policy of an
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`administrative agency faced with specific tasks and deadlines cannot of course control a trial
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`court’s discretion in managing the litigation before it.”).3
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`After the U.S. Steel decision, the Commission continued to apply the Rotary Wheel
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`Printers framework when considering in-house counsel’s access to confidential business
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`3 In 1988 Congress amended the statute governing “dissemination of confidential information
`disclosed in the course of an ongoing antidumping investigation,” indicating that the ITC’s
`evaluation of in-house counsel’s access in such investigations “‘should be guided by the factors
`enumerated in United States Steel Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984).’”
`Matsushita Elec. Indus. Co., Ltd. v. U.S., 929 F.2d 1577, 1578 (Fed. Cir. 1991) (citing H.R. Conf.
`Rep. No. 576, 100th Cong., 2d Sess. 623, reprinted in 1988 U.S. Code Cong. & Admin. News 1548,
`1656). The Commission thereafter amended its rules applicable to antidumping investigations to
`permit access by certain counsel not involved in “competitive decisionmaking.” See 929 F.2d at
`1579; 19 C.F.R. § 207.7(a)(3)(ii). These provisions do not directly address Section 337
`investigations, where “the scope of the information released to opposing counsel is far more
`extensive . . . than in Title VII investigation, thereby making the need for protection of confidential
`information in section 337 investigations even greater.” Rotary Wheel Printers, at 2-3; see Certain
`CD-ROM Controllers and Prods. Containing Same, Inv. No. 337-TA-409, Order No. 6, 1998 WL
`551675, at *2 (Aug. 24, 1998) (“neither the U.S. Steel nor the Matsushita case . . . pertains to the
`Commission’s administrative protective orders in section 337 cases,” through focus on “risk of
`inadvertent disclosure” may be appropriate); see also Certain Rotary Wheel Printing Systems, Inv.
`No. 337-TA-185, Order No. 7, 1984 WL 273895, at *1 (Apr. 25, 1984) (“the [U.S. Steel] Court made
`an important distinction between proceedings before a court as opposed to an administrative
`agency”).
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`information in Section 337 cases. In a second case involving the same counsel as Rotary Wheel
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`Printers, the Administrative Law Judge found that Commission policy was unchanged by U.S.
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`Steel and precluded in-house counsel from subscribing to the Protective Order. See Certain
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`Rotary Wheel Printing Systems, Inv. No. 337-TA-185, Order No. 7, 1984 WL 273895 (Apr. 25,
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`1984). And in Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471 (Fed. Cir. 1986), the
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`Federal Circuit affirmed the Commission’s practice as set forth in the Rotary Wheel Printers
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`decision. The Federal Circuit recognized that “[t]he Commission has resolved the difficult and
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`controversial question of the role of in-house counsel by taking a conservative position on the
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`side of optimum shielding of business information,” as “the Commission is heavily dependent on
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`the voluntary submission of information.” 808 F.2d at 1483. The Federal Circuit also noted
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`with approval that the Commission’s Rotary Wheel Printers decision did not establish a “per se
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`rule” against disclosure to “a competitor’s in-house counsel or management representative,” but
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`rather employed a three-part balancing test.” Id. at 1484.
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`
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`The Rotary Wheel Printers, U.S. Steel and Akzo decisions thus show that, within the
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`context of in-house counsel’s access to confidential information in Section 337 investigations,
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`the Commission’s approach overlaps with the U.S. Steel framework by taking into account the
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`risk of inadvertent disclosure as well as the need of the party seeking access to confidential
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`information. However, the Commission has taken “a conservative position on the side of
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`optimum shielding of business information” given the agency’s dependence on the voluntary
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`submission of information to promote expeditious adjudication. Akzo, 808 F.2d at 1483.
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`Following these decisions, Administrative Law Judges have applied the Federal Circuit
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`precedents in Azko and U.S. Steel and the balancing test in Rotary Wheel Printers to determine
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`whether counsel should be precluded from accessing confidential information under a protective
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`order. When parties have sought protective order subscriptions for in-house counsel in section
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`337 investigations, Administrative Law Judges have generally followed the precedent in Rotary
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`Wheel Printers and Azko to assess access to confidential business information. See, e.g., Certain
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`Flash Memory Chips and Products Containing Same, Inv. No. 337-TA-735, Order No. 10 at 5-6,
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`EDIS Doc ID 435445 (Oct. 13, 2010) (denying motion to amend protective order for in-house
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`counsel); Certain Modified Vaccinia Ankara (“MVA”) Viruses & Vaccines & Pharm.
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`Compositions Based Thereon, Inv. No. 337-TA-550, Order No. 9 at 4-6, EDIS Doc ID 243320
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`(Nov. 30, 2005) (denying motion to amend protective order for in-house counsel). This standard
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`is not necessarily equivalent to that applied in parallel federal district courts. See Certain
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`Phenylene Sulfide Polymers and Polymer Compounds, and Products Containing Same
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`(“Phenylene Sulfide Polymers”), Inv. No. 337-TA-296, Order No. 4 at 7, 1989 WL 609239 at *3
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`(May 15, 1989) (“the mere fact that there is a parallel district court action with a different
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`protective order does not establish a right to in-house counsel access to confidential information
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`submitted in a section 337 investigation”) (citing Rotary Wheel Printers).
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`Moreover, ALJ decisions have recognized that Akzo’s guidelines, including its emphasis
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`on the Commission’s distinct interest in protecting confidential business information, may apply
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`outside the in-house counsel context. See Certain Consumer Electronics, Including Mobile
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`Phones and Tablets, Inv. No. 337-TA-839, Order No. 9, 2012 WL 4955518, at * 2 (Aug. 10,
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`2012) (stating, citing Akzo, that attorneys at certain law firm could not sign onto protective order
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`where there was “a blurring of counsel and client roles” and given “the Commission’s firm
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`position that CBI should be shielded”); Certain DC-DC Controllers and Products Containing the
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`Same, Order No. 11, 2010 WL 1257292, at *2 (Apr. 1, 2010) (prohibiting, citing Akzo, foreign
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`expert witness from accessing confidential business information based on “potential harm from
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`an inappropriate release of CBI in this investigation, and no showing by complainants of any
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`particular need for [expert] to have access to CBI”); Certain Polymer Geogrid Prods. And
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`Processes Therefor, Inv. No. 337-TA-303, Order No. 5, 1989 WL 608946, at *2 (Oct. 30, 1989)
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`(denying motion to amend the protective order to allow “directors, officers and employees of the
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`parties access to confidential business information” in view of Akzo).
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`Other ALJ decisions have relied on the Federal Circuit’s U.S. Steel framework—
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`particularly its emphasis on the risk of inadvertent disclosure and “competitive
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`decisionmaking”—when determining whether to preclude access for certain outside counsel. In
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`Certain Noise Cancelling Headphones, for example, an Administrative Law Judge precluded an
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`attorney from subscribing to the protective order who was involved in patent prosecution and had
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`a “close relationship” with the complainant over several decades, finding that “the risk of
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`inadvertent disclosure is unnecessarily high.” Inv. No. 337-TA-626, Order No. 6 at 4-5 (Mar.
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`14, 2008) (EDIS Doc. ID 294722). In Certain Digital Satellite System Receivers and
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`Components Thereof, an Administrative Law Judge denied a motion to preclude access to
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`confidential business information, finding that an attorney’s involvement in licensing
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`negotiations was not “competitive decisionmaking.” Inv. No. 337-TA-392, Order No. 8 at 11-16
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`(Feb. 6, 1997) (EDIS Doc. ID 164869). These decisions and others cited by Complainants,
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`however, have not addressed outside counsel who was concurrently a board member for a party.4
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`Federal district courts considering whether to exclude corporate members and board
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`members from accessing confidential information have come to differing conclusions. In
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`Norbrook Labs. Ltd. v. G.C. Hanford Mfg. Co. (“Norbrook”), the court precluded an attorney
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`4 In Certain Cupric Hydroxide Formulated Fungicide, Inv. No. 337-TA-128, Order No. 19, 1982 WL
`213050 (Dec. 1, 1982), a pre-Rotary Wheel Printers decision, outside counsel was denied access
`because his “position as corporate secretary parallels and perhaps exceeds that of in-house counsel
`with respect to his access to, and possible participation in, corporate strategy discussions.” See also
`Part IV infra.
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`serving as corporate secretary and a board member from accessing confidential information. No.
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`5:03-CV-165 (HGM/GLS), 2003 WL 1956214, at *5 (Apr. 24, 2003). Applying U.S. Steel, the
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`court found that both of the attorney’s corporate roles “create a serious risk of the inadvertent
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`disclosure of confidential documents and information” and the “board meetings present an
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`unacceptable opportunity for the inadvertent disclosure of confidential information.” Id. In
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`addition, the court decided that it would not “endorse a situation that places [the attorney’s]
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`ethical obligations as an attorney in direct competition with his fiduciary duty to” the
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`corporation. Id; see also Meridian Enterprises Corp. v. Bank of Am. Corp., No. 4:06CV01117
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`RWS, 2008 WL 474326, at *3 (E.D. Mo. Feb. 15, 2008) (finding that “the risk of inadvertent
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`disclosure is great” because the attorney was “both a shareholder of Meridian and a member of
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`its Board of Directors, and therefore has a fiduciary duty to Meridian to disclose all information
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`in his possession germane to issues discussed.”); TiVo Inc. v. Verizon Commc’ns, Inc., No. 2:09-
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`CV-257, 2010 WL 9430466, at *2 (E.D. Tex. June 15, 2010) (precluding corporate officer and
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`board member from protective order where “his position on the board . . . creates an
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`unacceptable opportunity for the inadvertent disclosure of information” and “could create a
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`situation where his obligations as an attorney directly compete with his fiduciary duty”).
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`Other district courts decisions, also applying the U.S. Steel framework, have permitted
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`disclosure of confidential information to an attorney who sits on a board of directors. See, e.g.,
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`Home Fed. Bank of Tennessee v. Home Fed. Bank Corp., No. 3:18-CV-00379, 2020 WL
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`3568316, at *4 (E.D. Tenn. July 1, 2020) (denying motion to amend protective order to preclude
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`attorney, because “Defendant has not shown that Plaintiff’s Board of Directors makes decisions
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`based on information regarding Plaintiff's competition, and Defendant has not provided
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`documents that show that it would be harmed by the inadvertent disclosure of the information.”);
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`Fairchild Semiconductor Corp. v. Third Dimension Semiconductor, Inc., Civ. No. 08-158-P-H,
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`2009 WL 1210638, at *8-12 (D. Me. Apr. 30, 2009) (finding counsel who sits on corporate
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`board to be a “competitive decisionmaker” but declining to preclude him from accessing
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`confidential information because of hardship to the defendant). In Masimo Corp. v. True
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`Wearables, Inc. (“True Wearables”), Mr. Jensen was allowed to access confidential information
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`based on his representations that his membership on Cercacor’s board of directors was not a
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`“competitive decision-making role.” Civ. No. 8:18-cv-02001-JVS, Dkt. 111, 2020 WL 5215314,
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`at *4 (C.D. Cal. June 15, 2020).
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`III. BRIEFING
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`Apple’s motion argues that Mr. Jensen’s membership on Cercacor’s Board of Directors
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`presents a significant risk that he will use information from this investigation in competitively
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`sensitive discussions. Motion Memo. at 9-12. Apple contends that Mr. Jensen should be treated
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`like “in-house” counsel under Azko, and he should only be allowed to access Apple’s
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`confidential business information upon a showing of substantial need, which is not present in this
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`case. Id. at 12-14. Apple argues that the Commission is more stringent with respect to
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`protective orders than Federal courts and that district court judges who have allowed Mr. Jensen
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`access to confidential information were not aware of
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` Id. at 14-16.
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`In opposition, Complainants argue that Mr. Jensen should be treated like “outside
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`counsel” under the protective order, precluding him from accessing confidential business
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`information only if he is involved in “competitive decisionmaking” according to the definition in
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`U.S. Steel. Opposition at 6-7. Complainants submit that Mr. Jensen’s role on Cercacor’s Board
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`does not require him to make business decisions and that he would recuse himself from any
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`discussions that implicate confidential business information that he obtains from this
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`investigation. Id. at 7-8. In a declaration attached to the Opposition, Mr. Jensen explains that his
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`role on Cercacor’s Board “is to provide overall corporate governance and monitor the activities
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`of Cercacor.” Jensen Decl. ¶ 13. He submits that he “do[es] not expect any competitive business
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`decisions to be made at board meetings,” and “[i]f a business decision or even a discussion did
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`arise that could arguably be affected by information I have received under a protective order, I
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`would simply abstain from providing any input on that matter.” Id. ¶¶ 13-14. Complainants
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`submit that Mr. Jensen already has access to Apple’s confidential business information under the
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`protective order in the District Court for the Central District of California and argue that the
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`same policy should be applied to the present investigation. Opposition at 8-10. Complainants
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`state that, in previous matters where Mr. Jensen has represented Complainants, opposing parties
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`have unsuccessfully sought to preclude Mr. Jensen from accessing confidential business
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`information. Id. at 3-5. In True Wearables, the court overruled an objection to the disclosure of
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`confidential business information to Mr. Jensen, “credit[ing] Mr. Jensen’s declaration regarding
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`the scope of his current involvement with Plaintiffs, including his attesting under oath and as an
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`officer of the Court since 1990 that he does not have a competitive decision-making role with
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`Plaintiffs.” 2020 WL 5215314, at *4. In recent litigation between Complainants and Apple in
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`the same jurisdiction, the court again declined to exclude Mr. Jensen from a protective order.
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`Masimo Corp. v. Apple Inc., Civ. No. 8:20-cv-00048-JVS, Dkt. 67 (C.D. Cal. Jun. 30, 2020).5
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`Complainants rely on the finding in True Wearables that Mr. Jensen is not involved in
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`5 The protective order in Masimo Corp. v. Apple Inc. is attached to Complainants’ Opposition as
`Exhibit 15. The order does not explicitly address Mr. Jensen, but the parties’ arguments regarding
`the protective order were set forth in a joint stipulation, which is attached to Complainants’
`Opposition as Exhibit 14.
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`competitive decisionmaking, distinguishing the precedents cited by Apple where courts have
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`precluded attorneys from subscribing to a protective order. Id. at 10-13.
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`Responding to Apple’s arguments, Complainants argue that
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` is irrelevant to the present motion, because Mr. Jensen sits on
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`Cercacor’s board, not Masimo’s. Id. at 13. Complainants submit that precluding Mr. Jensen
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`from accessing confidential information would be prejudicial because he has longstanding
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`experience litigating Masimo’s patents that cannot be provided by other counsel. Id. at 14.
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`According to Joe Kiani, CEO of both Masimo and Cercacor, “no other lawyer can replace Mr.
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`Jensen’s experience and value to Masimo and Cercacor.” Kiani Decl. ¶ 17. Mr. Jensen offers to
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`resign from Cercacor’s board to resolve the issue. Jensen Decl. ¶ 15. Mr. Kiani submits that
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`Cercacor would accept Mr. Jensen’s resignation from the board to allow him to subscribe to the
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`protective order. Kiani Decl. ¶ 17.
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`In reply, Apple argues that Mr. Jensen’s role on Cercacor’s board of directors presents an
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`inherent risk of inadvertent disclosure of confidential information. Reply at 2-3. Apple submits
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`that the additional detail provided by Complainants regarding Mr. Jensen’s role does not change
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`this risk. Id. at 3-6. Apple argues that even under the precedent in U.S. Steel, Mr. Jensen is a
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`“competitive decisionmaker” who should be precluded from accessing confidential business
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`information. Id. at 6-7. Apple further argues that Mr. Jensen’s access to confidential
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`information in the related district court litigation should not affect any decision regarding the
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`protective order in this investigation because the district court case involves different patents and
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`is presently stayed pending resolution of inter partes review proceedings. Id. at 7-9.
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`Complainants argue that Apple’s reply is improper, suggesting that Apple’s motivation is
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`to deprive Complainants of their chosen counsel rather than protecting confidential information
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`from disclosure. Reply Opp. at 1-5.6
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`IV. DISCUSSION
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`In consideration of the parties’ briefing and Commission precedent with respect to
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`protective orders, the undersigned finds that Mr. Jensen shall be precluded from accessing
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`confidential business information under the protective order in this investigation while he serves
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`as a member of Cercacor’s Board of Directors.
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`In previous investigations, as discussed above, Administrative Law Judges have applied
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`the precedents in Rotary Wheel Printers, U.S. Steel and Akzo to determine whether to allow
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`counsel and other individuals to subscribe to the protective order. See Part II supra. Prior ALJ
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`decisions have not addressed a situation like Mr. Jensen’s, where outside counsel concurrently
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`serves on a party’s own board of directors. U.S. Steel recognized board membership as a
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`circumstance that blurs the distinction between in-house and outside counsel with respect to the
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`risk of inadvertent disclosure. See 730 F.2d at 1468 (rejecting a “general assumption” that in-
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`house lawyers are more likely to inadvertently breach their duties under a protective order given,
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`inter alia, the fact that some retained counsel “enjoy long and intimate relationships and
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`activities with one or more clients, activities on occasion including retained counsel’s service on
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`a corporate board of directors.”); cf. Certain Cupric Hydroxide Formulated Fungicide, Inv. No.
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`337-TA-128, Order No. 19, 1982 WL 213050 (Dec. 1, 1982) (denying outside counsel access
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`because his “position as corporate secretary parallels and perhaps exceeds that of in-house
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`6 Apple’s motion for leave to file a reply has been granted. See supra, n.1.
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`counsel with respect to his access to, and possible participation in, corporate strategy
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`discussions”).
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`For in-house counsel, the Commission has taken an approach in Section 337
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`investigations which—like U.S. Steel—considers the risk of inadvertent disclosure and needs of
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`the party seeking access, but which also factors in the agency’s “conservative position on the
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`side of optimum shielding of business information.” Akzo, 808 F.2d at 1483; Part II and n.3
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`supra. In the undersigned’s view, this interest remains relevant and should inform the question
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`of access to confidential information by outside counsel holding a position on a party’s board of
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`directors. That is, U.S. Steel’s focus on the risk of inadvertent disclosure and “competitive
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`decisionmaking” provides appropriate guidance, but it should be applied in light of the
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`Commission’s conservative position. Cf. Certain Consumer Electronics, Including Mobile
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`Phones and Tablets, Inv. No. 337-TA-839, Order No. 9, 2012 WL 4955518, at * 2 (Aug. 10,
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`2012) (taking into account “the Commission’s firm position that CBI should be shielded” in
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`circumstances where there was “a blurring of counsel and client roles”); Certain CD-ROM
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`Controllers and Prods. Containing Same, Inv. No. 337-TA-409, Order No. 6, 1998 WL 551675, at
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`*2 (Aug. 24, 1998) (applying U.S. Steel’s “focus . . . on the risk of inadvertent disclosure” and
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`resolving close case in favor of protecting against inadvertent disclosure).
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`Applying this framework, and based on a review of the declarations attached to
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`Complainants’ Opposition, the undersigned finds that Mr. Jensen’s role on Cercacor’s board of
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`directors is a position that may involve competitive decisionmaking and creates an unnecessarily
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`high risk of inadvertent disclosure. Cf. Noise Cancelling Headphones, 2008 WL 742054, at *2
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`(precluding access to confidential information where “the risk of inadvertent disclosure is
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`unnecessarily high”); Norbrook Laboratories Ltd., 2003 WL 1956214, *5. Mr. Jensen states that
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`the Board meetings involve “business updates on the status of various projects” and may involve
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`approval of “acquisitions of other companies based on management’s decision to make such an
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`acquisition.” Jensen Decl. ¶ 13. Although Mr. Jensen represents that he “do[es] not expect any
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`competitive business decisions to be made at board meetings,” he does not deny that the Board’s
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`role can encompass competitive decisionmaking or provide facts indicating the likelihood that
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`such circumstances will or will not occur. Id. He acknowledges the possibility that the Board
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`could be involved in evaluating “acquisition of a target company where my knowledge of
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`confidential information could arguably affect that decision.” Id. ¶ 14. Particularly given the
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`fact that detailed information regarding the Board’s activities is within the control of Cercacor,
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`the undersigned finds this showing insufficient to resolve issues regarding the heightened risk of
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`inadvertent disclosure. See Certain CD-ROM Controllers, 1998 WL 551675, at *2 (precluding
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`access where lawyer represented he was self-employed and had no input into any competitive
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`decisionmaking, but where his relationship with in-house counsel showed the “risk of at least
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`inadvertent disclosure is heightened”); cf. Rotary Wheel Printers, at 5 (noting that assessing risk
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`of inadvertent disclosure for in-house counsel requires “detailed information about the internal
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`procedures of a corporation,” which may not be available to party resisting disclosure).
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`Mr. Jensen further acknowledges that he and other board members have abstained from
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`discussions involving confidential information they obtain from third parties and describes such
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`abstention as a “common practice.” Jensen Decl. ¶ 14; see also Kiani Decl. ¶ 15 (“Board
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`members are frequently faced with discussions that might implicate knowledge that they have
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`obtained from other companies for which they are also board members.”). Although there is no
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`reason to doubt Mr. Jensen’s commitment to adhere to the protective order, the fact that board
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`members must abstain from certain discussions based on confidential information also indicates
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`a heightened risk of inadvertent disclosure.7
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`Moreover, Cercacor has not shown that precluding Mr. Jensen from accessing Apple’s
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`confidential information while serving on Cercacor’s Board of Directors will impose an
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`unreasonable hardship. Cf. In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1381 (Fed.
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`Cir. 2010) (when determining whether to impose a patent prosecution bar for an attorney, the
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`court should consider “the potential difficulty the client might face if forced to rely on other