Burroughs Wellcome Co. v. Barr Laboratories, Inc.

143 F.R.D. 611, 25 U.S.P.Q. 2d (BNA) 1274, 1992 U.S. Dist. LEXIS 12729, 1992 WL 201305
CourtDistrict Court, E.D. North Carolina
DecidedAugust 3, 1992
DocketNos. 91-41-CIV-4-H, 92-117-CIV-5-H
StatusPublished
Cited by20 cases

This text of 143 F.R.D. 611 (Burroughs Wellcome Co. v. Barr Laboratories, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. North Carolina primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Burroughs Wellcome Co. v. Barr Laboratories, Inc., 143 F.R.D. 611, 25 U.S.P.Q. 2d (BNA) 1274, 1992 U.S. Dist. LEXIS 12729, 1992 WL 201305 (E.D.N.C. 1992).

Opinion

ORDER

MALCOLM J. HOWARD, District Judge.

This matter is before the court on the motion of defendant Barr Laboratories, Inc., (“Barr”), to compel plaintiff Burroughs Wellcome Co. (“BW Co.”) to produce discovery pursuant to Rule 37 of the Federal Rules of Civil Procedure. Barr seeks production of 357 documents withheld by BW Co. on the basis of the attorney-client and/or attorney work product privilege.1 The parties have submitted memoranda and have presented oral arguments before the court. The court has painstakingly reviewed each document in camera and now rules on this matter.

I.

INTRODUCTION

Plaintiff BW Co., a manufacturer of zidovudine (“AZT”), an FDA-approved drug used in the treatment of acquired immunodeficiency syndrome (“AIDS”), instituted this patent infringement action after defendant Barr filed an Abbreviated New Drug Application with the FDA seeking approval to manufacture and market a generic drug containing AZT. At issue in the underlying litigation is the validity of several U.S. patents related to AZT owned by BW Co. The parties are now in the midst of voluminous and hotly contested discovery. The motion before the court, Barr’s third motion to compel, challenges BW Co.’s assertion of the attorney-client and/or attorney work product privilege for numerous documents related to its U.S. and foreign patents.

The court will begin by stating the general principles regarding the attorney-client privilege and the attorney work product doctrine that have governed its in camera review. Next, the court will apply the gen[615]*615eral principles to the documents submitted for review. Wherever appropriate, the court has grouped together documents according to the basis for the privilege. Finally, the court has attached to this order an appendix setting forth its specific ruling for each document.

II.

DISCUSSION OF THE LAW

Attorney-Client Privilege

The attorney-client privilege prevents the disclosure of confidential client communications made to an attorney while seeking legal advice. The party asserting the privilege has the burden of establishing the following elements:

(1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication was made (a) is the member of the bar of a court, or his subordinate and (b) in connection with this communication is acting as a lawyer; (3) the communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily (i) an opinion of law or (ii) legal services or (iii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client.

United States v. Jones, 696 F.2d 1069, 1072 (4th Cir.1982) (quoting United States v. United Shoe Machinery Corp., 89 F.Supp. 357, 358-59 (D.Mass.1950)); Republican Party of North Carolina v. Martin, 136 F.R.D. 421, 425-26 (E.D.N.C.1991). Because the assertion of the privilege frustrates the search for truth, the privilege must be strictly construed. Martin, 136 F.R.D. at 426.

The attorney-client privilege may be asserted in patent litigation to protect communications from a client to a patent lawyer. Knogo Corp. v. United States, 213 U.S.P.Q. (BNA) 936 (Ct.Cl.1980). However, to be protected by the attorney-client privilege, communications from client to patent lawyer must be made both 1) with the intent that they be confidential and 2) in connection with a request for legal advice. Therefore, the following classifications of documents are not protected by the attorney-client privilege:

1) Client authorizations to file applications and take other steps necessary to obtain registration;
2) Papers submitted to the Patent Office;
3) Compendiums of filing fees and requirements in the United States and foreign countries for various types of applications;
4) Resumes of applications filed and registrations obtained or rejected (including dates and file or registration numbers);
5) Technical information communicated to the attorney but not calling for a legal opinion or interpretation and meant primarily for aid in completing patent applications;
6) Business advice such as that related to product marketing; and
7) Communications whose confidentiality [the client] has waived.

Jack Winter, Inc. v. Koratron Co., 54 F.R.D. 44, 47 (N.D.Cal.1971).

8) Communications which pass through an attorney who acts only as a conduit for a third party;
9) Transmittal letters or acknowledgement of receipt letters devoid of legal advice or requests for such advice and disclosing no privileged matters;
10) Patent disclosures, draft patent applications, technical non-legal material related to the final patent, or studies of the prior art.

Detection Systems, Inc. v. Pittway Corp., 96 F.R.D. 152, 155 (W.D.N.Y.1982) (citing Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146, 1168 (D.S.C.1974) and Sneider v. Kimberly-Clark Corp., 91 F.R.D. 1, 5, 7 (N.D.Ill.1980)).

Guided by these general principles, the court has carefully reviewed each document in an effort to avoid an overly broad ruling that could potentially exacerbate BW Co.’s legitimate interests in the attorney-client privilege. For those communiea[616]*616tions comprised primarily of technical information, the court has made every effort to protect any communication made to an attorney for the primary purpose of obtaining legal advice or a legal opinion as to the subject matter or patentability of an invention. Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 201-02 (E.D.N.Y.1988); Hewlett-Packard Co. v. Bausch & Lomb, Inc., 116 F.R.D. 533, 542 (N.D.Cal.1987); Hercules v. Exxon Corp., 434 F.Supp. 136, 147 (D.Del. 1977). In doing so, the court adopts the position of the court in Knogo Corp., which held:

The [patent] attorney is not a mere conduit for either the client’s communications containing the technical information or the technical information itself. He does not file his client’s communications with the Patent Office. He does not file transcripts of his conversations with the client regarding technical matters and then await the issuance of a patent ...
The fact that much of the technical information in one form or another finds its way into the patent application, to be made public when the patent issues, should not preclude the assertion of the privilege over the communication in which the information was disclosed to the attorney.

213 U.S.P.Q. (BNA) 936, 940 (Ct.C1.1980)

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143 F.R.D. 611, 25 U.S.P.Q. 2d (BNA) 1274, 1992 U.S. Dist. LEXIS 12729, 1992 WL 201305, Counsel Stack Legal Research, https://law.counselstack.com/opinion/burroughs-wellcome-co-v-barr-laboratories-inc-nced-1992.