In re Rivastigimine Patent Litigation

239 F.R.D. 351, 2006 WL 3386767
CourtDistrict Court, S.D. New York
DecidedNovember 22, 2006
DocketNo. 05 MD 166(HB)
StatusPublished
Cited by1 cases

This text of 239 F.R.D. 351 (In re Rivastigimine Patent Litigation) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Rivastigimine Patent Litigation, 239 F.R.D. 351, 2006 WL 3386767 (S.D.N.Y. 2006).

Opinion

OPINION & ORDER

BAER, District Judge.

Pursuant to 28. U.S.C. § 636(b)(1)(A) (2006) and Federal Rule of Civil Procedure 72(a), plaintiffs Novartis Pharmaceuticals Corporation, Novartis AG, Novartis Pharma AG, Novartis International Pharmaceutical Ltd., and Proterra AG (collectively, “Novartis” or “Plaintiffs”) move this Court for reconsideration of portions of a discovery decision by Magistrate Judge James C. Francis IV, issued on August 8, 2006.

In that decision, Magistrate Francis granted in part the motion filed by defendants Dr. Reddy’s Laboratories, Ltd., Dr. Reddy’s Laboratories, Inc., Watson Pharmaceuticals Inc., Watson Laboratories, Inc., and Sun Pharmaceutical Industries, Ltd. (collectively “Defendants”) to compel production of certain communications between Novartis and their Swiss patent agents and Swiss in-house counsel (the “Swiss Motion documents”) for which Novartis had claimed attorney-client privilege, because there was no privilege. Magistrate Francis also compelled production of certain communications received or authored by U.S. patent agent Thomas McGovern (the “McGovern documents”) because, after in camera review, they did not reflect confidential communications.

Because Magistrate Francis did not abuse his discretion in finding that under Swiss law, attorney-client privilege does not extend to the “Swiss Motion documents,” Plaintiffs motion to reconsider that portion of Magistrate Francis’ decision is denied. The portion of Magistrate Francis’ ruling regarding certain “McGovern documents” which Plaintiffs have moved to reconsider is remanded to Magistrate Francis for the reasons articulated below.1

I. BACKGROUND

The Court assumes familiarity with the background facts of the case as set forth in prior opinions. See, e.g., In re Rivastigmine Patent Litig., 2005 WL 957426, 2005 U.S. Dist. LEXIS 7167 (S.D.N.Y. April 25, 2005).

A. Background of the Case

Novartis manufactures and owns the patent rights for rivastigmine tartrate, which it sells under the brand name “Exelon” for the treatment of Alzheimer’s-related dementia. In re Rivastigmine Patent Litig., 2005 WL 957426, at *1-2, 2005 U.S. Dist. LEXIS 7167, at *5-6. Defendants have sought approval from the U.S. Food and Drug Administration to market generic forms of Exelon. See id. Plaintiff Novartis subsequently filed individual patent infringement actions against Defendants, alleging that Defendants’ proposed products infringed two of Plaintiffs’ registered patents. Id. at *1-2, 2005 U.S. Dist. LEXIS 7167, at *6-7.

The actions involved common questions of fact and were consolidated before the Southern District of New York. In re Rivastigmine Litig., 360 F.Supp.2d 1361 (Jud.Pan. Mult.Lit.2005). The parties subsequently engaged in pre-trial discovery, and several disputes were brought before Magistrate Francis and resolved. See In re Rivastigmine Litig., 237 F.R.D. 69 (S.D.N.Y.2006) (herein “August 8, 2006 order”). Plaintiffs now bring a motion for reconsideration of two portions of Magistrate Francis’ August 8, 2006 order.

B. Background of the Instant Disputes

1. Swiss Motion Documents

On July 21, 2005, Defendants filed a motion to, inter alia, compel Plaintiffs to disclose communications between Novartis and Swiss patent agents, Swiss in-house counsel and European patent attorneys relating to Swiss patent applications (i.e. the “Swiss Motion documents”).2 See Letter of Maurice N. Ross, July 21, 2005, Ex. 2 to September 12, 2006 Declaration of James K. Stronski in Support of Defendants’ Opposition to Plaintiffs’ Partial Reconsideration of Magistrate Francis’ August 8, 2006 Order (“Stronski [353]*353Decl.”). Plaintiffs objected in part on the grounds that the communications were protected by attorney-client privilege.

After interim discovery to ascertain the nature of the documents, see In re Rivastigmine, 237 F.R.D. 69, 72, Magistrate Francis held, inter alia, that under Swiss law, communications between Novartis employees and Swiss patent agents or Swiss in-house counsel were not covered by attorney-client privilege.3 See id. at 104. Accordingly, Magistrate Francis ordered Plaintiffs to disclose the Swiss Motion documents with few exceptions.4 Id. Plaintiffs now move for reconsideration of this portion of the August 8, 2006 order.

2. McGovern Documents

On September 28, 2005, Defendants submitted a motion to compel Plaintiffs to produce several documents based on alleged deficiencies in Plaintiffs’ privilege log (“Privilege Log Motion”). Letter from Maurice Ross to Magistrate Judge Francis, Sept. 28, 2005, Ex. 6 to Stronski Decl. Plaintiffs claimed several of the communications at issue were by U.S. patent agents or other non-attorneys working at the direction of licensed U.S. attorneys and thus were protected by attorney-client privilege. Id. at 78. On November 21, 2005, Magistrate Francis ordered Plaintiffs to produce the withheld documents to the Court for in camera review. Plaintiffs complied with Magistrate Francis’s order. The communications requested by Defendants consisted of, inter alia, documents authored or received by Thomas McGovern, a patent agent registered in the United States and formerly employed by Novartis or its predecessor (the “McGovern documents”).

Magistrate Francis generally held that McGovern was supervised by an U.S. attorney during his participation in the communications at issue, with some exceptions. In re Rivastigmine at 81.5 Thus, confidential communications authored or received by McGovern could be privileged under U.S. attorney-client privilege. However, Magistrate Francis held that certain communications involving McGovern were not privileged. Id. at 115-16. Plaintiffs now move for reconsideration of Magistrate Francis’s decision with respect to two of these communications— McGovern documents No. 207 and No. 209.

C. Swiss Law

Plaintiffs base their claim of attorney-client privilege over the “Swiss Motion documents” primarily on three statutes: Basel-City Code of Civil Procedure § 116, Article 162 of the Swiss Penal Code, and Article 321(a) of the Swiss Federal Code of Obligations. The relevant Swiss statutes are as follows:6

1. Baselr-City Code of Civil Procedure § 116

Basel-City Code of Civil Procedure § 116 provides in full: 7

[354]*354Testimony may be denied by:
1. those who would have to speak to their detriment or disgrace in the taking [of the testimony],
2. clergy members, doctors, attorneys, notaries, a child’s counsel according to Art. 146 ZGB, as well as those contracted by the complaint body (ombudsman), in reference to facts that were learned in the exercise of their profession and which by their nature are to be kept secret.
3.

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239 F.R.D. 351, 2006 WL 3386767, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-rivastigimine-patent-litigation-nysd-2006.