In re HIV Antitrust Litigation

District Court, N.D. California·Decided June 3, 2022·No. 3:19-cv-02573·Unknown

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 San Francisco Division 11 PETER STALEY, et al., Case No. 19-cv-02573-EMC (LB)

12 Plaintiffs, DISCOVERY ORDER 13 v. Re: ECF No. 1104 14 GILEAD SCIENCES, INC., et al., 15 Defendants. 16 17 INTRODUCTION 18 The parties dispute two issues: (1) whether the scope of Teva’s privilege waiver is too narrow, 19 and (2) whether Teva’s waiver extends to the work-product documents held by Teva’s outside 20 counsel that were not communicated to Teva and do not reference communications with Teva.1 21 The court can decide the dispute without oral argument. Civ. L.R. 7-1(b). 22 Generally, courts construe waivers narrowly. But the opposing party must have a fair 23 opportunity to test the veracity of the waiving party’s position on the subject matter of the waiver. 24 Therefore, the scope of Teva’s privilege waiver extends to advice concerning the merits of the 25

26 1 Disc. Ltr. at 3–7 – ECF No. 1104 (filed under seal at ECF No. 1103-2). Citations refer to material in 27 the Electronic Case File (ECF); pinpoint citations are to the ECF-generated page numbers at the top of documents. 1 patent dispute and whether Teva retained first-filer exclusivities but does not include antitrust 2 advice. The plaintiffs can test Teva’s arguments concerning the strength of the subject patents 3 without referencing antitrust advice. Concerning the uncommunicated work product, 4 uncommunicated information is unlikely to have informed Teva’s views on the subject matter of 5 the waiver. Thus, the privilege waiver does not extend to materials that were not communicated to 6 Teva and do not reference communications with Teva. 7 8 SUMMARY OF ARGUMENT 9 Teva argues that it waived its privilege on “two narrow issues: (1) ‘the patent merits of 10 Gilead’s and BMS’s U.S. patents covering tenofovir, emtricitabine, and efamirenz,’ and (2) 11 ‘whether Teva had retained or forfeited its regulatory first-filer exclusivities.’”2 Teva asserts that it 12 has “produced otherwise privileged documents within the scope of its waiver in four broad 13 categories: (1) Teva’s substantive evaluation of the patent merits of Teva’s disputes with Gilead 14 and/or BMS; (2) Teva’s assessment of the likely outcome of those disputes; (3) potential 15 settlement of those disputes; and (4) negotiations of those settlements.”3 The plaintiffs contend 16 that Teva’s selective waiver of privilege is improper because it paints an incomplete and 17 inaccurate picture of settlements between Teva and Gilead.4 18 According to the retailer plaintiffs, the waiver includes all reasons for the settlement between 19 Teva and Gilead. The plaintiffs maintain that Teva’s waiver necessarily implicates the following 20 four core antitrust issues: “(1) any potential or actual agreements to settle the patent litigations, 21 including the value or significance of any terms in those agreements; (2) the negotiation of, and 22 decision to enter, any settlement agreements, including the issues the parties considered in 23 deciding to enter agreements; (3) Teva’s exclusivity, including the value and propriety of 24 exclusivity for Teva; and (4) the merits and likely outcomes of the patent infringement actions.”5 25 26 2 Id. at 3. 3 Id. 27 4 Id. at 2–3. 1 The plaintiffs argue that Teva cannot withhold documents concerning “the reverse payment 2 value it received from Gilead, its exclusivity, and antitrust advice it received in connection with 3 the settlement negotiations” because those matters “relate directly to the ‘reasons’ it agreed to the 4 Gilead settlement, and thus are inextricably part of the same subject as to which it selectively 5 waived.”6 Thus, a primary aspect of the dispute is whether Teva has waived privilege over 6 antitrust advice it received concerning the settlement with Gilead. The plaintiffs also claim that 7 Teva has not, in fact, produced all information concerning its first-filer exclusivity or the value of 8 the settlements.7 9 For instance, the plaintiffs cite redactions in documents discussing the settlement generally and 10 argue that these redactions obscure Teva’s “reasons for settling.”8 In response, Teva asserts that 11 the redactions contain “antitrust advice with no discussion of valuation,” “privileged and non- 12 responsive information about irrelevant products,” and a “discussion of unrelated litigation 13 between Teva and GSK.”9 Teva has also offered to provide unredacted versions of the documents 14 for in camera review.10 15 Concerning the uncommunicated work product, the plaintiffs contend that excluding that 16 material from the waiver will prevent the plaintiffs from accessing “oral advice actually 17 conveyed” to Teva because the witnesses will not be able to recall the information during 18 “deposition[s] conducted without the benefit of the lawyer’s files.”11 The plaintiffs note that 19 limiting the waiver to only those documents that were actually transmitted to Teva or that 20 memorialized oral advice “ignores how lawyers and clients really work.”12 21 22 23 6 Id. 24 7 Id. at 3–4. 25 8 Id. at 3. 26 9 Id. at 4. 10 Id. at 4 n.2. 27 11 Id. at 5. 1 Teva, relying on In re EchoStar Comm’n Corp., 448 F.3d 1294 (Fed. Cir. 2006), contends that 2 it would be improper to require Teva to produce work-product materials from outside counsel that 3 were not communicated to Teva because that uncommunicated material could not possibly have 4 impacted Teva’s decisions concerning the settlements between Teva and Gilead.13 Teva argues 5 that forcing it to produce this material would encourage speculation about its possible motives for 6 the settlements and undermine the work-product doctrine based on unfounded concerns that 7 Teva’s outside counsel communicated their work to Teva without leaving a paper trail.14 8 In this regard, Teva also cites the parties’ apparent agreement that Teva would only need to 9 search the records of certain custodians, not including outside counsel, for discoverable 10 materials.15 To support its contention that this agreement applies to the present dispute, Teva notes 11 that the parties reached this agreement after Teva indicated it may selectively waive privilege.16 12 The plaintiffs counter that the retailer plaintiffs “never agreed [that] Teva need not search outside 13 counsel’s files if it elected to produce a partial set of privileged materials.” The plaintiffs also 14 argue that certain plaintiffs (including United HealthCare Services, Inc. and the Individual Health 15 Plan Plaintiffs) were not partis to any such agreement because they served their own discovery 16 requests.17 17 18 ANALYSIS 19 1. Scope of Waiver 20 Under Rule 502(a), when a party “waives the attorney-client privilege or work-product 21 protection, the waiver extends to an undisclosed communication . . . only if: (1) the waiver is 22 intentional; (2) the disclosed and undisclosed communications or information concern the same 23 subject matter; and (3) they ought in fairness to be considered together.” Fed. R. Evid. 502(a)(1). 24

25 13 Id. at 6–7. 26 14 Id. at 7. 15 Id. at 7 n.3 27 16 Id. 1 Generally, then, a waiver extends to all communications on the same subject matter. Cormack v. 2 United States, 118 Fed. Cl. 39, 43 (2014) (citing cases); see also Weil v. Inv./Indicators, Rsch. & 3 Mgmt., Inc., 647 F.2d 18, 24 (9th Cir. 1981) (“[V]oluntary disclosure of the content of a privileged 4 attorney communication constitutes waiver of the privilege as to all other such communications on 5 the same subject.”).

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