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The discovery issue before the court was whether the defendant's co-counsel, who also serves as corporate counsel and a member of the board of directors, should have access to the plaintiff's confidential documents and information. The attorney in question filled a number of roles, but did not serve specifically as in-house counsel. Rather, he was retained separately to work on this case in addition to his duties as secretary and board member. The plaintiff argued that despite counsel's arm's-length ties, he could not be considered anything other than an 'insider, and must not be privy to the plaintiff's trade secrets.'

The district court agreed. The court relied on the seminal case on protective orders, U.S. Steel Corp. v. U.S., 730 F.2d 1465 (1984), where the Court of Appeals for the Federal Circuit held that courts should avoid drawing an arbitrary distinction based on counsel's title, but rather the focus should be properly centered on the risk of even inadvertent disclosure of trade secrets. Here, it made no difference whether the attorney was actually in-house counsel or whether he is directly involved in competitive decision-making, research or sales strategy. What is key, the court stated, is the fact that he sits in the same room as those who are involved in competitive decision-making,' a situation that presents an 'unacceptable opportunity' for inappropriate, if inadvertent, disclosure of trade secrets.