UNITED STATES DISTRICT COURT                             
                    DISTRICT OF MINNESOTA                                


Toyota Motor Sales, U.S.A., Inc.,         No. 22-cv-1681 (KMM/JFD)       

          Plaintiff,                                                     

v.                                          ORDER                        

Allen Interchange LLC, et al.,                                           

          Defendants.                                                    



    Plaintiff and Counter Claim Defendant Toyota Motor Sales, U.S.A., Inc. (TMS) and 
Defendant and Counter Claimant Allen Interchange LLC (Allen) seek a protective order in 
this case. Both parties suggested similar competing protective orders. (Dkt. No. 77, 84). 
However, the parties disagreed on whether TMS’s in-house attorney and paralegal are 
allowed to see discovery material designated “Attorney’s Eyes Only” (AEO).  
    After hearing oral argument, United States Magistrate Judge John F. Docherty 
issued a Protective Order excluding TMS’s in-house counsel, Ms. O’Rourke, and paralegal, 
Ms. Rojas, from seeing AEO materials. (Dkt. No. 101.) This matter is before the Court 
upon TMS’s Objections to Magistrate Judge Docherty’s November 13, 2023 Protective 
Order (the Protective Order). (Dkt. No. 114.)                             
    Magistrate judges can hear nondispositive motions in the first instance, subject to 
district court reversal only where the decision is “clearly erroneous or contrary to law.” 
Fed. R. Civ. P. 72(a); D. Minn. LR 72.2(a)(3). This standard of review is “extremely 
deferential” to the magistrate judge’s decision. Scott v. United States, 

 (D. Minn. 2008). Clear error exists when, in a review of the entire record, the District 
Court “is left with the definite and firm conviction that a mistake has been committed,” 
even if there is evidence to support the position. Shukh v. Seagate Technology, LLC, 

 (D. Minn. 2013) (quotations omitted). A magistrate judge’s finding is 
contrary to law when it fails to apply or misapplies the relevant law. Knutson v. Blue Cross 
& Blue Shield of Minn., 

 (D. Minn. 2008). However, courts rarely find 
magistrate judge decisions contrary to law in the absence of controlling authority. See In 
re Bair Hugger Forced Air Warming Devices Prods. Liab. Litig., MDL No. 15–2666 

(JNE/FLN), 

, at *3 (D. Minn. Apr. 13, 2017); United States v. Boston 
Sci. Corp., No. 11-cv-2453 (JNE/SER), 

, at *2 (D. Minn. Aug. 28, 
2019).                                                                    
    The Court has wide discretion to determine the scope of a protective order. May 
Coating  Techs. Inc.,  v.  Illinois  Tool  Works, 

 (D. Minn. 1994). In 

determining whether Ms. O’Rourke and Ms. Rojas should have access to AEO materials, 
Judge Docherty balanced the risk of O’Rourke’s inadvertent disclosure of Allen’s highly 
confidential  information  against  the  potential  harm  to  TMS’s  ability  to  adequately 
prosecute and defend its case. Brown Bag Software v. Symantec Corp., 

 (9th Cir. 1992). Judge Docherty held that the balance tipped in Allen’s favor and 

against O’Rourke and Rojas’s access to AEO documents.                     
    Judge Docherty, at the suggestion of both parties,1 references the Federal Circuit’s 
U.S. Steel Corp. v. United States regarding whether in-house counsel should have access 
to AEO materials. 

 (Fed. Cir. 1984). In U.S. Steel, the Federal Circuit held 

that the degree of the lawyer’s involvement in “competitive decisionmaking” was critical 
to  determining  their  access  to  AEO  materials.  

  n.3.  Competitive 
decisionmaking is “a counsel’s activities, association, and relationship with a client” that 
“involve counsel’s advice and participation in any or all of the client’s decisions (pricing, 
product  design,  etc.)  made  in  light  of  similar  or  corresponding  information  about  a 

competitor.” 

 The U.S. Steel court rejected a bright-line approach based solely on the 
lawyer’s formal position in lieu of a counsel-by-counsel analysis of each lawyer’s factual 
circumstances. 

 at 1468–69. By determining if the lawyer’s “advice and participation” 
made  her  a  competitive  decisionmaker,  the  court  could  assess  the  level  of  risk  of 
inadvertent disclosure.                                                   

    Clearly Erroneous                                                    
    TMS argues that the Protective Order is clearly erroneous because there is no 
evidence  that  O’Rourke  is  involved  in  any  competitive  decisionmaking.  The  Court 
disagrees.                                                                
    TMS generally asserts that O’Rourke does not make substantive business decisions, 

but rather that the responsibilities stated in her Declaration are only legal in nature, 
including  managing  commercial  disputes  and  providing  legal  advice  to  TMS.  (Dkt. 


    1 Dkt. No. 114 at 4–5; Dkt. No. 79, 86, 93, 95.                      
No. 114 at 5–6; O’Rourke Decl. at ¶ 6.) TMS first argues that the Protective Order is clearly 
erroneous because Judge Docherty improperly “minimize[d]” O’Rourke’s Declaration, 
instead relying too heavily on other items in the record. (Dkt. No. 114 at 4–5.) Second, 

TMS  asserts  that  O’Rourke’s  legal  responsibilities,  which  include  selecting  counsel, 
resource allocation decisions, and determining the likelihood of success and recovery in 
lawsuits, do not constitute competitive decisionmaking. (Id. at 5–9.) The responsibilities 
cited that could constitute competitive decisionmaking, like deciding who to sue and 
developing information for the lawsuit, TMS argues are absent from the record. (Id. at 7–

8).                                                                       
    First,  the  Court  disagrees  that  Judge  Docherty  “minimize[d]”  O’Rourke’s 
Declaration. O’Rourke’s Declaration states that she is primarily charged with “managing 
various commercial disputes,” including litigation against “suppliers, vendors, or third 
parties, such as the instant litigation.” (O’Rourke Decl. at ¶ 6.) She also says that she does 

not make “substantive business decisions” relating to trademark enforcement or the gray 
market. (Id. at ¶ 10.) Judge Docherty noted that he “accept[ed] the accuracy” of these 
statements, but that its contents were outweighed by the rest of the record. (Dkt. No. 101 
at 5.) Specifically, counsel for TMS claimed at oral argument that TMS intended to 
“scour[] the earth” to enforce their interests against the gray market and that O’Rourke 

“absolutely” gave advice on whether or not to go after specific gray market operators. (Dkt. 
No. 113 at 9:1–3, 12:10–12.) Accepting O’Rourke’s description of her role in enforcement 
litigation and TMS’s intent to bring future enforcement actions, Judge Docherty reasonably 
concluded that O’Rourke is involved in competitive decisionmaking.        
    Next, TMS criticizes Judge Docherty’s weighing of the record before him. TMS 
relies on the fact that the Declaration is “unrebutted” to argue that the Declaration should 
be given “considerably more weight” than the rest of the record. (Dkt. No. 114 at 4.) 

However, Judge Docherty is tasked with reviewing the entire record in front of him and is 
not tied to weighing that evidence as TMS advocates. Even if read in isolation, the 
responsibilities  described  in  O’Rourke’s  Declaration  show  that  her  involvement  in 
enforcement litigation would raise concerns about inadvertent disclosure. And the text of 
U.S. Steel supports conducting a holistic inquiry into all of the factual circumstances 

governing a lawyer’s responsibilities and relationships, rather than relying on a specific 
part of the record or one party’s own declaration. Judge Docherty’s review of the record 
was not clearly erroneous in his conclusion that O’Rourke is a competitive decisionmaker. 
    Judge  Docherty  also  did  not  err  in  deciding  that  O’Rourke’s  responsibilities 
constitute competitive decisionmaking. TMS asserts that the responsibilities as cited in the 

Protective  Order,  when  taken  individually  are  either  insufficient  to  be  competitive 
decisionmaking or lack support in the record. However, this argument misses the mark of 
both U.S. Steel’s approach and Judge Docherty’s line of reasoning. Again, U.S. Steel sets 
forth a totality of the circumstances approach to determining if an attorney is a competitive 
decisionmaker. U.S. Steel, 

, 1468 n.3. Picking a single responsibility upon 

which to make this decision would undermine the central holding of U.S. Steel. Instead, a 
holistic review, like the one performed by Judge Docherty, is used to determine if a lawyer 
is a competitive decisionmaker.                                           
    TMS’s  objections  also  sidesteps  Judge  Docherty’s  primary  concern:  that 
O’Rourke’s  support  of  and  proximity  to  TMS’s  brand  enforcement  efforts  greatly 
heightens the risk of inadvertent disclosure. O’Rourke’s Declaration states that she is 

involved in managing actions taken against “suppliers, vendors, and third parties,” like the 
enforcement action taken here. (O’Rourke Decl. at ¶ 6.) TMS has also conceded that it is 
taking an aggressive approach to identify and act against “gray market” operators and that 
O’Rourke is involved in those cases. (Dkt. No. 114 at 8; Dkt. No. 113 at 9:1–3, 12:10–12.) 
When addressed at oral argument, counsel for TMS doubled down, resulting in Judge 

Docherty reasonably concluding that these efforts were part of its corporate strategy rather 
than just compensatory actions. (Dkt. No. 113 at 9:1–3, 12:10–12.) This campaign by TMS 
puts O’Rourke in a position to advise, and potentially litigate on behalf of, those who would 
act against the same entities disclosed through discovery in this case. In conducting a U.S. 
Steel analysis, Judge Docherty was not clearly erroneous in determining that O’Rourke was 

a competitive decisionmaker.                                              
    Contrary to Law                                                      
    TMS next contends that Judge Docherty’s Protective Order is contrary to law and 
raises six arguments in support of this claim. Again, the Court finds TMS’s position 
unpersuasive.                                                             

    TMS’s first and fourth arguments assert comparable points: that legal advice is not 
enough to make an attorney a competitive decisionmaker. Relying on Matsushita Electric 
Industrial Co. v. United States, 

 (Fed. Cir. 1991), TMS contends that 
providing legal advice to competitive decisionmakers is, by itself, not enough to constitute 
a lawyer as a competitive decisionmaker. The Matsushita court held that “[i]t is a natural 
extension of the rule enunciated . . . in U.S. Steel that a denial of access sought by in-house 
counsel on the sole ground of status as a corporate officer is error.” 

. That is 

entirely consistent with the case-by-case approach adopted in U.S. Steel, and as explained 
above. Judge Docherty did not simply rely on the fact that O’Rourke provides legal advice, 
nor based his decision solely on O’Rourke’s job title. Rather, Judge Docherty considered 
that she provides legal advice as part of a broader inquiry, focusing not only on who she is 
advising, but also on the type of advice she gives and the kinds of competitive decisions 

she influences.                                                           
    TMS  also  mischaracterizes  Matsushita.  In  Matsushita,  the  Federal  Circuit 
conducted a U.S. Steel analysis, determining the in-house counsel at issue was allowed to 
see AEO materials because he was not a competitive decisionmaker. 

. 
However, the in-house counsel there was tasked only with providing the company’s 

decisionmakers with employee benefit advice, completely separate from any business 
decisions involved in the antidumping action at bar. 

 at 1579–80. Here, O’Rourke 
provides advice to TMS’s decisionmakers on sufficiently similar matters to this one to 
create a heightened risk of inadvertent disclosure.  Judge Docherty’s decision to find 
O’Rourke to be a competitive decisionmaker is reasonable under these facts and not 

contrary to law.                                                          
    Second, TMS asserts that designating O’Rourke as a competitive decisionmaker 
would cause all in-house counsel to be ineligible to view AEO materials, citing cases from 
this District where courts have permitted access by in-house counsel. However, preventing 
O’Rourke from accessing AEO materials in this case does not prevent future in-house 
counsel from doing so in the future. Instead, each counsel must be treated individually 
based on their own factual circumstances. U.S. Steel, 

. While courts in this 

District have reached various conclusions based on case-specific facts in other cases, that 
does not suggest that Judge Docherty misapplied the law in this case.     
    Third, TMS states that Judge Docherty did not conduct a “degree of involvement” 
analysis in making his determination. However, the degree of involvement analysis, taken 
from enXco Development Corp. v. Northern States Power, is just a restatement of the U.S 

Steel framework. No. 11-1171 (MJD/JSM), 

, at *5 (D. Minn. April 3, 
2012) (stating that “A lawyer’s degree of involvement in competitive decision-making” is 
crucial  to  a  U.S.  Steel  analysis).  As  discussed  above,  Judge  Docherty  appropriately 
conducted a U.S. Steel analysis here and came to a reasonable conclusion. 
    TMS also argues that there was no evidence in the record of the types of job 

responsibilities  required  to  conduct  a  degree  of  involvement  analysis.  Reading  the 
documents presented by the parties and their presentations at Oral Argument as a whole, 
the rationale for Judge Docherty’s ruling is apparent, specifically his concerns about 
O’Rourke’s involvement in enforcement actions. Whether it is described as a U.S. Steel 
framework or a degree of involvement analysis, Judge Docherty’s ruling is appropriate and 

not contrary to law.                                                      
    Fifth, TMS asserts that its retention of highly skilled outside counsel for this case 
does not minimize its need for O’Rourke to have access to AEO materials. This Court 
disagrees. The skill and experience of outside counsel mitigate much of the harm TMS 
would face from O’Rourke’s exclusion from seeing AEO documents. As Judge Docherty 
stated, TMS’s outside counsel can review AEO documents, formulate a discovery strategy, 
and “seek Ms. O’Rourke’s input without divulging the highly confidential information they 

have reviewed.” (Dkt. No. 101 at 6–7.) Further, the parties are free to negotiate the 
disclosure of certain AEO documents or renegotiate the Protective Order. (Id. at 7.) Judge 
Docherty also made clear that he would protect TMS from Allen’s “over-use” of the AEO 
designation. (Id.) In balancing the risk of inadvertent disclosure by O’Rourke against the 
harm to TMS’s ability to litigate this case, Judge Docherty’s conclusion is not contrary to 

law. Brown Bag Software, 

.                                
    Sixth, TMS argues that O’Rourke’s access to AEO materials would not undermine 
her ethical responsibilities to TMS. While he did not discuss this point in his Protective 
Order, Judge Docherty addressed this concern at oral argument. (Dkt. No. 113 at 10:15–
23.) Even if it had been part of his holding rather than just a discussion at oral argument, 

Judge Docherty could have reasonably concluded that O’Rourke’s ethical responsibilities 
to TMS would be affected if she was granted access to Allen’s AEO materials. This Court, 
like Judge Docherty, does not doubt that Ms. O’Rourke can and will operate under the 
highest ethical standards or that she will faithfully honor the Protective Order. However, it 
is reasonable to conclude that this exposure would put O’Rourke in an “untenable position” 

of choosing to provide the legal advice she is bound to give and prevent disclosure of 
confidential information that she is bound to protect. Brown Bag Software, 

.  As  Judge  Docherty  concluded,  O’Rourke’s  responsibilities  and  relationship  to 
TMS’s brand enforcement actions create a situation where the risk of inadvertent disclosure 
is significantly heightened, as U.S. Steel’s competitive decisionmaker framework was 
intended to determine.                                                    
    Finally, nowhere in its appeal did TMS present any controlling authority that Judge 

Docherty contradicted. In re Bair Hugger Forced Air Warming Devices Products Liability 
Litigation, MDL No. 15–2666 (JNE/FLN), 

, at *3; Boston Scientific 
Corp., No. 11-cv-2453 (JNE/SER), 

, at *2. And TMS pointed to no 
controlling authority in its moving papers submitted to Judge Docherty that would have 
mandated  a  different  result.  Judge  Docherty’s  November  13,  2023  Protective  Order 

excluding Ms. O’Rourke and Ms. Rojas was neither clearly erroneous nor contrary to law. 
    For these reasons, Plaintiff and Counter Defendant Toyota Motor Sales, U.S.A., 
Inc.’s objections to Magistrate Judge John F. Docherty’s November 13, 2023 Protective 
Order are OVERRULED and Magistrate Judge John F. Docherty’s November 13, 2023 
Protective Order is AFFIRMED.                                             


Date: April 12, 2024            s/Katherine Menendez                     
                                Katherine Menendez                       
                                United States District Judge             

                UNITED STATES DISTRICT COURT                             
                    DISTRICT OF MINNESOTA                                


Toyota Motor Sales, U.S.A., Inc.,         No. 22-cv-1681 (KMM/JFD)       

          Plaintiff,                                                     

v.                                          ORDER                        

Allen Interchange LLC, et al.,                                           

          Defendants.                                                    



    Plaintiff and Counter Claim Defendant Toyota Motor Sales, U.S.A., Inc. (TMS) and 
Defendant and Counter Claimant Allen Interchange LLC (Allen) seek a protective order in 
this case. Both parties suggested similar competing protective orders. (Dkt. No. 77, 84). 
However, the parties disagreed on whether TMS’s in-house attorney and paralegal are 
allowed to see discovery material designated “Attorney’s Eyes Only” (AEO).  
    After hearing oral argument, United States Magistrate Judge John F. Docherty 
issued a Protective Order excluding TMS’s in-house counsel, Ms. O’Rourke, and paralegal, 
Ms. Rojas, from seeing AEO materials. (Dkt. No. 101.) This matter is before the Court 
upon TMS’s Objections to Magistrate Judge Docherty’s November 13, 2023 Protective 
Order (the Protective Order). (Dkt. No. 114.)                             
    Magistrate judges can hear nondispositive motions in the first instance, subject to 
district court reversal only where the decision is “clearly erroneous or contrary to law.” 
Fed. R. Civ. P. 72(a); D. Minn. LR 72.2(a)(3). This standard of review is “extremely 
deferential” to the magistrate judge’s decision. Scott v. United States, 

 (D. Minn. 2008). Clear error exists when, in a review of the entire record, the District 
Court “is left with the definite and firm conviction that a mistake has been committed,” 
even if there is evidence to support the position. Shukh v. Seagate Technology, LLC, 

 (D. Minn. 2013) (quotations omitted). A magistrate judge’s finding is 
contrary to law when it fails to apply or misapplies the relevant law. Knutson v. Blue Cross 
& Blue Shield of Minn., 

 (D. Minn. 2008). However, courts rarely find 
magistrate judge decisions contrary to law in the absence of controlling authority. See In 
re Bair Hugger Forced Air Warming Devices Prods. Liab. Litig., MDL No. 15–2666 

(JNE/FLN), 

, at *3 (D. Minn. Apr. 13, 2017); United States v. Boston 
Sci. Corp., No. 11-cv-2453 (JNE/SER), 

, at *2 (D. Minn. Aug. 28, 
2019).                                                                    
    The Court has wide discretion to determine the scope of a protective order. May 
Coating  Techs. Inc.,  v.  Illinois  Tool  Works, 

 (D. Minn. 1994). In 

determining whether Ms. O’Rourke and Ms. Rojas should have access to AEO materials, 
Judge Docherty balanced the risk of O’Rourke’s inadvertent disclosure of Allen’s highly 
confidential  information  against  the  potential  harm  to  TMS’s  ability  to  adequately 
prosecute and defend its case. Brown Bag Software v. Symantec Corp., 

 (9th Cir. 1992). Judge Docherty held that the balance tipped in Allen’s favor and 

against O’Rourke and Rojas’s access to AEO documents.                     
    Judge Docherty, at the suggestion of both parties,1 references the Federal Circuit’s 
U.S. Steel Corp. v. United States regarding whether in-house counsel should have access 
to AEO materials. 

 (Fed. Cir. 1984). In U.S. Steel, the Federal Circuit held 

that the degree of the lawyer’s involvement in “competitive decisionmaking” was critical 
to  determining  their  access  to  AEO  materials.  

  n.3.  Competitive 
decisionmaking is “a counsel’s activities, association, and relationship with a client” that 
“involve counsel’s advice and participation in any or all of the client’s decisions (pricing, 
product  design,  etc.)  made  in  light  of  similar  or  corresponding  information  about  a 

competitor.” 

 The U.S. Steel court rejected a bright-line approach based solely on the 
lawyer’s formal position in lieu of a counsel-by-counsel analysis of each lawyer’s factual 
circumstances. 

 at 1468–69. By determining if the lawyer’s “advice and participation” 
made  her  a  competitive  decisionmaker,  the  court  could  assess  the  level  of  risk  of 
inadvertent disclosure.                                                   

    Clearly Erroneous                                                    
    TMS argues that the Protective Order is clearly erroneous because there is no 
evidence  that  O’Rourke  is  involved  in  any  competitive  decisionmaking.  The  Court 
disagrees.                                                                
    TMS generally asserts that O’Rourke does not make substantive business decisions, 

but rather that the responsibilities stated in her Declaration are only legal in nature, 
including  managing  commercial  disputes  and  providing  legal  advice  to  TMS.  (Dkt. 


    1 Dkt. No. 114 at 4–5; Dkt. No. 79, 86, 93, 95.                      
No. 114 at 5–6; O’Rourke Decl. at ¶ 6.) TMS first argues that the Protective Order is clearly 
erroneous because Judge Docherty improperly “minimize[d]” O’Rourke’s Declaration, 
instead relying too heavily on other items in the record. (Dkt. No. 114 at 4–5.) Second, 

TMS  asserts  that  O’Rourke’s  legal  responsibilities,  which  include  selecting  counsel, 
resource allocation decisions, and determining the likelihood of success and recovery in 
lawsuits, do not constitute competitive decisionmaking. (Id. at 5–9.) The responsibilities 
cited that could constitute competitive decisionmaking, like deciding who to sue and 
developing information for the lawsuit, TMS argues are absent from the record. (Id. at 7–

8).                                                                       
    First,  the  Court  disagrees  that  Judge  Docherty  “minimize[d]”  O’Rourke’s 
Declaration. O’Rourke’s Declaration states that she is primarily charged with “managing 
various commercial disputes,” including litigation against “suppliers, vendors, or third 
parties, such as the instant litigation.” (O’Rourke Decl. at ¶ 6.) She also says that she does 

not make “substantive business decisions” relating to trademark enforcement or the gray 
market. (Id. at ¶ 10.) Judge Docherty noted that he “accept[ed] the accuracy” of these 
statements, but that its contents were outweighed by the rest of the record. (Dkt. No. 101 
at 5.) Specifically, counsel for TMS claimed at oral argument that TMS intended to 
“scour[] the earth” to enforce their interests against the gray market and that O’Rourke 

“absolutely” gave advice on whether or not to go after specific gray market operators. (Dkt. 
No. 113 at 9:1–3, 12:10–12.) Accepting O’Rourke’s description of her role in enforcement 
litigation and TMS’s intent to bring future enforcement actions, Judge Docherty reasonably 
concluded that O’Rourke is involved in competitive decisionmaking.        
    Next, TMS criticizes Judge Docherty’s weighing of the record before him. TMS 
relies on the fact that the Declaration is “unrebutted” to argue that the Declaration should 
be given “considerably more weight” than the rest of the record. (Dkt. No. 114 at 4.) 

However, Judge Docherty is tasked with reviewing the entire record in front of him and is 
not tied to weighing that evidence as TMS advocates. Even if read in isolation, the 
responsibilities  described  in  O’Rourke’s  Declaration  show  that  her  involvement  in 
enforcement litigation would raise concerns about inadvertent disclosure. And the text of 
U.S. Steel supports conducting a holistic inquiry into all of the factual circumstances 

governing a lawyer’s responsibilities and relationships, rather than relying on a specific 
part of the record or one party’s own declaration. Judge Docherty’s review of the record 
was not clearly erroneous in his conclusion that O’Rourke is a competitive decisionmaker. 
    Judge  Docherty  also  did  not  err  in  deciding  that  O’Rourke’s  responsibilities 
constitute competitive decisionmaking. TMS asserts that the responsibilities as cited in the 

Protective  Order,  when  taken  individually  are  either  insufficient  to  be  competitive 
decisionmaking or lack support in the record. However, this argument misses the mark of 
both U.S. Steel’s approach and Judge Docherty’s line of reasoning. Again, U.S. Steel sets 
forth a totality of the circumstances approach to determining if an attorney is a competitive 
decisionmaker. U.S. Steel, 

, 1468 n.3. Picking a single responsibility upon 

which to make this decision would undermine the central holding of U.S. Steel. Instead, a 
holistic review, like the one performed by Judge Docherty, is used to determine if a lawyer 
is a competitive decisionmaker.                                           
    TMS’s  objections  also  sidesteps  Judge  Docherty’s  primary  concern:  that 
O’Rourke’s  support  of  and  proximity  to  TMS’s  brand  enforcement  efforts  greatly 
heightens the risk of inadvertent disclosure. O’Rourke’s Declaration states that she is 

involved in managing actions taken against “suppliers, vendors, and third parties,” like the 
enforcement action taken here. (O’Rourke Decl. at ¶ 6.) TMS has also conceded that it is 
taking an aggressive approach to identify and act against “gray market” operators and that 
O’Rourke is involved in those cases. (Dkt. No. 114 at 8; Dkt. No. 113 at 9:1–3, 12:10–12.) 
When addressed at oral argument, counsel for TMS doubled down, resulting in Judge 

Docherty reasonably concluding that these efforts were part of its corporate strategy rather 
than just compensatory actions. (Dkt. No. 113 at 9:1–3, 12:10–12.) This campaign by TMS 
puts O’Rourke in a position to advise, and potentially litigate on behalf of, those who would 
act against the same entities disclosed through discovery in this case. In conducting a U.S. 
Steel analysis, Judge Docherty was not clearly erroneous in determining that O’Rourke was 

a competitive decisionmaker.                                              
    Contrary to Law                                                      
    TMS next contends that Judge Docherty’s Protective Order is contrary to law and 
raises six arguments in support of this claim. Again, the Court finds TMS’s position 
unpersuasive.                                                             

    TMS’s first and fourth arguments assert comparable points: that legal advice is not 
enough to make an attorney a competitive decisionmaker. Relying on Matsushita Electric 
Industrial Co. v. United States, 

 (Fed. Cir. 1991), TMS contends that 
providing legal advice to competitive decisionmakers is, by itself, not enough to constitute 
a lawyer as a competitive decisionmaker. The Matsushita court held that “[i]t is a natural 
extension of the rule enunciated . . . in U.S. Steel that a denial of access sought by in-house 
counsel on the sole ground of status as a corporate officer is error.” 

. That is 

entirely consistent with the case-by-case approach adopted in U.S. Steel, and as explained 
above. Judge Docherty did not simply rely on the fact that O’Rourke provides legal advice, 
nor based his decision solely on O’Rourke’s job title. Rather, Judge Docherty considered 
that she provides legal advice as part of a broader inquiry, focusing not only on who she is 
advising, but also on the type of advice she gives and the kinds of competitive decisions 

she influences.                                                           
    TMS  also  mischaracterizes  Matsushita.  In  Matsushita,  the  Federal  Circuit 
conducted a U.S. Steel analysis, determining the in-house counsel at issue was allowed to 
see AEO materials because he was not a competitive decisionmaker. 

. 
However, the in-house counsel there was tasked only with providing the company’s 

decisionmakers with employee benefit advice, completely separate from any business 
decisions involved in the antidumping action at bar. 

 at 1579–80. Here, O’Rourke 
provides advice to TMS’s decisionmakers on sufficiently similar matters to this one to 
create a heightened risk of inadvertent disclosure.  Judge Docherty’s decision to find 
O’Rourke to be a competitive decisionmaker is reasonable under these facts and not 

contrary to law.                                                          
    Second, TMS asserts that designating O’Rourke as a competitive decisionmaker 
would cause all in-house counsel to be ineligible to view AEO materials, citing cases from 
this District where courts have permitted access by in-house counsel. However, preventing 
O’Rourke from accessing AEO materials in this case does not prevent future in-house 
counsel from doing so in the future. Instead, each counsel must be treated individually 
based on their own factual circumstances. U.S. Steel, 

. While courts in this 

District have reached various conclusions based on case-specific facts in other cases, that 
does not suggest that Judge Docherty misapplied the law in this case.     
    Third, TMS states that Judge Docherty did not conduct a “degree of involvement” 
analysis in making his determination. However, the degree of involvement analysis, taken 
from enXco Development Corp. v. Northern States Power, is just a restatement of the U.S 

Steel framework. No. 11-1171 (MJD/JSM), 

, at *5 (D. Minn. April 3, 
2012) (stating that “A lawyer’s degree of involvement in competitive decision-making” is 
crucial  to  a  U.S.  Steel  analysis).  As  discussed  above,  Judge  Docherty  appropriately 
conducted a U.S. Steel analysis here and came to a reasonable conclusion. 
    TMS also argues that there was no evidence in the record of the types of job 

responsibilities  required  to  conduct  a  degree  of  involvement  analysis.  Reading  the 
documents presented by the parties and their presentations at Oral Argument as a whole, 
the rationale for Judge Docherty’s ruling is apparent, specifically his concerns about 
O’Rourke’s involvement in enforcement actions. Whether it is described as a U.S. Steel 
framework or a degree of involvement analysis, Judge Docherty’s ruling is appropriate and 

not contrary to law.                                                      
    Fifth, TMS asserts that its retention of highly skilled outside counsel for this case 
does not minimize its need for O’Rourke to have access to AEO materials. This Court 
disagrees. The skill and experience of outside counsel mitigate much of the harm TMS 
would face from O’Rourke’s exclusion from seeing AEO documents. As Judge Docherty 
stated, TMS’s outside counsel can review AEO documents, formulate a discovery strategy, 
and “seek Ms. O’Rourke’s input without divulging the highly confidential information they 

have reviewed.” (Dkt. No. 101 at 6–7.) Further, the parties are free to negotiate the 
disclosure of certain AEO documents or renegotiate the Protective Order. (Id. at 7.) Judge 
Docherty also made clear that he would protect TMS from Allen’s “over-use” of the AEO 
designation. (Id.) In balancing the risk of inadvertent disclosure by O’Rourke against the 
harm to TMS’s ability to litigate this case, Judge Docherty’s conclusion is not contrary to 

law. Brown Bag Software, 

.                                
    Sixth, TMS argues that O’Rourke’s access to AEO materials would not undermine 
her ethical responsibilities to TMS. While he did not discuss this point in his Protective 
Order, Judge Docherty addressed this concern at oral argument. (Dkt. No. 113 at 10:15–
23.) Even if it had been part of his holding rather than just a discussion at oral argument, 

Judge Docherty could have reasonably concluded that O’Rourke’s ethical responsibilities 
to TMS would be affected if she was granted access to Allen’s AEO materials. This Court, 
like Judge Docherty, does not doubt that Ms. O’Rourke can and will operate under the 
highest ethical standards or that she will faithfully honor the Protective Order. However, it 
is reasonable to conclude that this exposure would put O’Rourke in an “untenable position” 

of choosing to provide the legal advice she is bound to give and prevent disclosure of 
confidential information that she is bound to protect. Brown Bag Software, 

.  As  Judge  Docherty  concluded,  O’Rourke’s  responsibilities  and  relationship  to 
TMS’s brand enforcement actions create a situation where the risk of inadvertent disclosure 
is significantly heightened, as U.S. Steel’s competitive decisionmaker framework was 
intended to determine.                                                    
    Finally, nowhere in its appeal did TMS present any controlling authority that Judge 

Docherty contradicted. In re Bair Hugger Forced Air Warming Devices Products Liability 
Litigation, MDL No. 15–2666 (JNE/FLN), 

, at *3; Boston Scientific 
Corp., No. 11-cv-2453 (JNE/SER), 

, at *2. And TMS pointed to no 
controlling authority in its moving papers submitted to Judge Docherty that would have 
mandated  a  different  result.  Judge  Docherty’s  November  13,  2023  Protective  Order 

excluding Ms. O’Rourke and Ms. Rojas was neither clearly erroneous nor contrary to law. 
    For these reasons, Plaintiff and Counter Defendant Toyota Motor Sales, U.S.A., 
Inc.’s objections to Magistrate Judge John F. Docherty’s November 13, 2023 Protective 
Order are OVERRULED and Magistrate Judge John F. Docherty’s November 13, 2023 
Protective Order is AFFIRMED.                                             


Date: April 12, 2024            s/Katherine Menendez                     
                                Katherine Menendez                       
                                United States District Judge