Smithkline Beecham Corp. v. Apotex Corp.

193 F.R.D. 530, 2000 U.S. Dist. LEXIS 11263, 2000 WL 776998
CourtDistrict Court, N.D. Illinois
DecidedMay 26, 2000
DocketNo. 98 C 3952
StatusPublished
Cited by25 cases

This text of 193 F.R.D. 530 (Smithkline Beecham Corp. v. Apotex Corp.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Smithkline Beecham Corp. v. Apotex Corp., 193 F.R.D. 530, 2000 U.S. Dist. LEXIS 11263, 2000 WL 776998 (N.D. Ill. 2000).

Opinion

MEMORANDUM ORDER

BOBRICK, United States Magistrate Judge.

Before the court is the motion of defendants Apotex Corporation, Apotex Inc., and Torpharm, Inc. to compel the production of certain documents listed in the privilege log of plaintiffs Smithkline Beecham Corporation and Beecham Group, Inc.

I. BACKGROUND

This case concerns the anti-depressant pharmaceutical that plaintiffs market as “Paxil.” Beecham obtained United States Patent No. 4,721,723 on the drug Crystalline Paroxetine Hydrochloride Hemihydrate on January 26, 1988 (“723 Patent”), and eventually assigned it to Smithkline.1 Defendant Apotex, a Canadian corporation manufacturing and marketing pharmaceuticals, established TorPharm as an operating division in 1993. TorPharm, also a Canadian corporation, was established to develop, test, and manufacture drugs in conformance with the requirements of the United States Food and Drug Administration (“FDA”).

On May 18, 1998, plaintiffs received a letter from TorPharm notifying them that TorPharm had filed an Abbreviated New Drug Application with the FDA for “Paroxetine HCI Tablets.” The letter informed plaintiffs that TorPharm believed its product did not infringe on the 723 Patent because it contained paroxetine in an anhydrous state,2 as opposed to a hemihydrous state. Plaintiffs dispute this claim, contending that paroxetine hydrochloride in an anhydrous state will convert to a hemihydrous state.3

On June 26, 1998, plaintiffs filed a one-count patent infringement claim against defendants. Plaintiffs seek an order barring FDA approval of the defendants’ product until the expiration of the 723 Patent. They also seek an order barring defendants from manufacturing, using, or selling their product until that time as well. Defendants have answered, and asserted the affirmative defenses of unenforceability and invalidity of the 723 Patent.

Presently before the court, however, is a dispute concerning the discoverability of some 1500 documents. Defendants sought production of documents relating to the conception, reduction to practice, development and testing of the invention. Plaintiffs claim the materials presently at issue are protected by the attorney-client privilege or the work product doctrine. To support their claims of immunity from discovery, the plaintiffs first described the documents at issue in a 370-page privilege log. After a brief review of that submission, it was clear to the court that plaintiffs’ descriptions were insufficient to allow a ruling as to whether the documents were discoverable. Pursuant to court order, plaintiffs submitted a 386-page privilege log, in addition to discovering that nearly 100 documents which they originally considered privileged actually were discoverable. Then, with briefing on this matter nearly complete, defendants sought production on an additional 200 or so documents — this in a single sentence in an “additional reply memorandum.” Plaintiffs were then obliged to file yet another privilege log, this one covering the newly sought documents in 89 pages. It may well be that all the documents at issue are presently properly categorized and before the court, but these two sides have proceeded [534]*534in such a haphazard manner that it is anyone’s guess.

The current versions of the privilege logs present several issues, the same ones that the parties have been quarreling over for some time. The first, and most basic, is the adequacy of plaintiffs’ descriptions of documents in the privilege log itself. Plaintiffs’ original log was inadequate, failing in many instances to identify recipients and authors, or even nations of origin. In a case such as this, it is important to remember not only that the privilege is a hindrance, albeit a tolerated one, to the disposition of justice, but that it is the party asserting the privilege who bears the burden of establishing its applicability. More often than not, parties proceed in such a manner that would suggest they believe their opponent must undermine their unsupported claims of privilege or that it is the court’s task to protect their communications for them. Neither, of course, is the ease. Accordingly, this court directed the plaintiff to file a privilege log that complied with Fed.R.Civ.P. 26(b)(5), and cases such as Allendale Mut. Ins. Co. v. Bull Data Systems, Inc., 145 F.R.D. 84 (N.D.Ill.1992); and In re General Instrument Corp. Securities Litigation, 190 F.R.D. 527 (N.D.Ill.2000). That means the description of each document and its contents must be sufficiently detailed to allow the court to determine whether the elements of attorney-client privilege — or in other cases, work product doctrine — have been established. Failing this, the documents must be produced.4 We now address the attorney-client privilege and work product doctrine, as well as the more specific issues raised in this matter, and evaluate the descriptions in plaintiffs’ privilege logs.

II. ATTORNEY-CLIENT PRIVILEGE

The party seeking to withhold materials from discovery bears the burden of establishing the essential elements to demonstrate the materials are privileged. United States v. Evans, 113 F.3d 1457, 1461 (7th Cir.1997). The elements have been summarized as follows:

(1) Where legal advice of any kind is sought (2) from a professional legal advisor in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected from disclosure by himself or by the legal adviser, (8) except the protection may be waived.

Id. (quoting 8 John Henry Wigmore, Evidence in Trials at Common Law § 2292 (John T. McNaughton rev.1961)). Furthermore, the privilege must be established on a document-by-document basis; a blanket claim failing to specify what information is protected will not suffice. United States v. White, 970 F.2d 328, 334 (7th Cir.1992).

It is important to remember that, because the privilege impairs the court’s search for the truth, it is narrowly construed. Evans, 113 F.3d at 1461. Not all information transmitted to an attorney becomes cloaked with the privilege. White, 970 F.2d at 334. For example, when information is transmitted to, an attorney with the intent that it be transmitted to a third party, the material is not privileged. United States v. Lawless, 709 F.2d 485, 487 (7th Cir.1983). In the end, however, the question is: does the document in question reveal, directly or indirectly, the substance of a confidential attorney-client communication. Ohio-Sealy Mattress Mfg. Co. v. Kaplan, 90 F.R.D. 21, 28 (N.D.Ill. 1980).

This dispute presents some significant issues beyond the ordinary context of attorney-client privilege. One is whether the court should recognize the United Kingdom’s law of privilege for communications with patent agents. This touches on a large portion of the documents in dispute.

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193 F.R.D. 530, 2000 U.S. Dist. LEXIS 11263, 2000 WL 776998, Counsel Stack Legal Research, https://law.counselstack.com/opinion/smithkline-beecham-corp-v-apotex-corp-ilnd-2000.