In Re Murphy

560 F.2d 326, 41 A.L.R. Fed. 102, 23 Fed. R. Serv. 2d 1229, 1977 U.S. App. LEXIS 12040
CourtCourt of Appeals for the Eighth Circuit
DecidedAugust 12, 1977
Docket76-1916
StatusPublished
Cited by237 cases

This text of 560 F.2d 326 (In Re Murphy) is published on Counsel Stack Legal Research, covering Court of Appeals for the Eighth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In Re Murphy, 560 F.2d 326, 41 A.L.R. Fed. 102, 23 Fed. R. Serv. 2d 1229, 1977 U.S. App. LEXIS 12040 (8th Cir. 1977).

Opinion

560 F.2d 326

41 A.L.R.Fed. 102, 1977-2 Trade Cases 61,592

In re Subpoena addressed to Samuel W. MURPHY, Jr., and the
law firm of Donovan Leisure Newton & Irvine, Appellants.
UNITED STATES of America, Plaintiff-Appellee,
v.
PFIZER INC. et al., Defendants (two cases).
In re Subpoena addressed to Merrell E. CLARK, Jr., and Henry
J. Zafian, and the law firms of Winthrop, Stimson,
Putnam & Roberts and Fish & Neave, Appellants.

Nos. 76-1916 and 76-1931.

United States Court of Appeals,
Eighth Circuit.

Submitted May 17, 1977.
Decided Aug. 12, 1977.

Peter Dorsey, Minneapolis, Minn. (argued), for appellants Samuel Murphy et al.; Larry L. Vickery, Franklin D. Gray and Stephen J. Snyder, Minneapolis Minn., on brief.

Sheldon Oliensis, New York City (argued), for appellants Merrell Clark et al.; Gordon G. Budicker, Minneapolis, Minn., on brief.

John J. Powers, III, U. S. Dept. of Justice, Washington D. C. (argued), for appellee; Donald I. Baker, Asst. Atty. Gen., Barry Grossman, Paul A. Owens, Edward S. Panek and John Galus, Washington, D. C., and Don O. Burley, Minneapolis, Minn., on brief.

Before GIBSON, Chief Judge, and BRIGHT and HENLEY, Circuit Judges.

GIBSON, Chief Judge.

This appeal presents sensitive and far-reaching issues regarding the extent to which an attorney's "opinion work product" is immune from discovery under Fed.R.Civ.P. 26(b)(3).1 Resolution of these issues requires an interpretation of Fed.R.Civ.P. 26(b)(3) and a review of the policies and competing interests underlying the work product privilege.

* In 1969, the Government filed a three-count civil action against Pfizer Inc., Bristol Myers Company, American Cyanamid Company, Olin Corporation, Squibb Corporation and The Upjohn Company. In Count I, the Government is seeking to cancel Pfizer's tetracycline patent on the grounds that it was procured fraudulently. Count II is a common law action of deceit which seeks to hold Pfizer, Cyanamid and Bristol liable for overcharges in excess of $203 million sustained by the Government on direct and federally financed purchases of broad spectrum antibiotics.2 Count III charges all defendants with various violations of federal antitrust laws.3 During discovery proceedings in this case, the law firms representing Cyanamid and Bristol were ordered to turn over various documents containing opinion work product to the Government. The validity of this order is the primary issue on this appeal.

A skeletal history of this case will aid in placing the legal issues in perspective. In the early 1950's, product patent applications for the broad spectrum antibiotic drug tetracycline were filed by Pfizer, Cyanamid and Bristol. Because of these competing applications, the Patent Office declared "interference" between Pfizer and Cyanamid. This interference proceeding was settled when the parties executed a cross-licensing agreement in which Cyanamid conceded priority to Pfizer's tetracycline application and received a license from Pfizer to market tetracycline. In exchange, Pfizer received a license to use two of Cyanamid's crucial patents in the production of tetracycline.

In September 1954, before a patent had been issued on tetracycline, Bristol began producing tetracycline and marketing it in dosage form under its brand name. Cyanamid filed an action against Bristol which charged Bristol with infringing Cyanamid's patents in the production of tetracycline. This Cyanamid-Bristol litigation was settled when Cyanamid granted Bristol a license to use the Cyanamid patents in the manufacture of tetracycline.

In October 1954, the Patent Examiner ruled that Pfizer could not patent tetracycline because it lacked novelty. Eventually, however, the Patent Examiner reversed his decision and, in January 1955, issued the patent to Pfizer. On the day the tetracycline patent was issued, Pfizer commenced a lawsuit against Bristol, Squibb and Upjohn, charging defendants with infringing Pfizer's patent. Immediately thereafter, Bristol, Squibb and Upjohn filed an action to secure a declaratory judgment that they were not infringing the Pfizer patent. In 1956, these actions were settled when Pfizer granted licenses to Bristol to produce and sell tetracycline, with royalties paid to Pfizer. In addition, Pfizer issued licenses to Squibb and Upjohn which allowed them to purchase and sell tetracycline, with Pfizer receiving royalties on their net sales.

The Government has long viewed defendants' roles in the patenting and marketing of tetracycline with suspicion. The Government believes that Pfizer, Cyanamid and Bristol committed fraud on the Patent Office by suppressing relevant information and filing false and misleading statements in regard to the tetracycline patent applications. The fraud was committed, the Government argues, in order to assure that Pfizer would receive the tetracycline patent and allow Cyanamid and Bristol to share in the monopoly benefits of tetracycline through licensing agreements. The defendants are also accused of violating federal antitrust laws by conspiring to monopolize the tetracycline market. Essentially, the Government argues that the defendants, with full knowledge that the Pfizer tetracycline patent was invalid and unenforceable, settled the various patent interference and infringement proceedings in order to perpetuate their monopoly control over the drug tetracycline. These arguments of the Government were partially successful in a Federal Trade Commission action against, inter alia, Pfizer, Cyanamid and Bristol,4 but were unavailing in an antitrust criminal case against these companies.5 The present civil action was filed by the Government in 1969 to recover damages allegedly incurred because of the fraudulent and illegal activities of the defendant pharmaceutical companies.

II

a. The Government's Discovery Motions.

Since the institution of this action, the parties have engaged in prolonged and hotly contested discovery proceedings. The primary point of contention between the parties stems from an attempt by the Government to review the files of the three law firms that have represented either Cyanamid or Bristol for the past several years. The law firm of Donovan Leisure Newton & Irvine (Donovan Leisure) has represented Cyanamid since approximately 1939, primarily in antitrust litigation. The firm of Winthrop, Stimson, Putnam & Roberts (Winthrop) and the patent law firm of Fish & Neave served as legal counsel to Bristol in the Federal Trade Commission and criminal proceedings, and presently represent Bristol in this civil litigation.

Early in 1971, the Government filed motions seeking to discover legal documents and internal memoranda that were prepared by these law firms on behalf of Bristol or Cyanamid from 1946 to 1956.6

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Bluebook (online)
560 F.2d 326, 41 A.L.R. Fed. 102, 23 Fed. R. Serv. 2d 1229, 1977 U.S. App. LEXIS 12040, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-murphy-ca8-1977.