The opinion of the court was delivered by: Douglas F. Eaton, United States Magistrate Judge.
Judge Castel received letters from Barr dated January 30, 2006, from Shire dated February 7, and from Barr dated February 17. He also received Barr's Exhibits A through V and Shire's Exhibits 1 through 33. (I will refer to certain of these exhibits as "Ex. __.") By order dated March 13, he assigned me to hear and determine the issue of whether Shire had violated the protective order. I heard oral argument on March 22, 2006. By letters dated April 10 and 11, Barr submitted Exhibits W, X and Y. Shire then sent me a letter dated April 12. In a Memorandum and Order dated April 25, I directed Shire's attorneys to conduct a search for their pertinent communications with Shire, and to submit them to me in camera along with certain sworn statements. In compliance with that order, Shire's attorneys submitted three documents, each dated May 26, 2006. I have reviewed them in camera. By letters dated June 6 and 13, Barr requests access to some of the in camera material. The in camera material is:
1. The 10-page Declaration of Porter F. Fleming Regarding Document Search Methodology and Results.
I direct Shire to serve Barr with a copy. I find that Shire's search has been more than adequate.
2. The 22-page Declaration of Porter F. Fleming Regarding Privileged Communications. It annexes the 24 documents found in the search, and explains why it 22 of them are privileged. I agree that they are privileged, but I find it necessary to describe a few portions of them in this Opinion. I deny Barr's request to see this Declaration or documents 1-22. I direct Shire to serve Barr with copies of documents 23 and 24; Barr has already seen them, and Shire does not claim privilege as to them.
3. The 7-page Declaration of Shona McDiarmid. It annexes copies of the two patents in suit, and copies of Barr's notice letters to Shire dated January 14 and August 15, 2003. I deny Barr's request to see this Declaration, although I find it necessary to quote one portion of it in this Opinion.
Of course, the fact that I have chosen to describe some of the privileged documents does not constitute any waiver or forfeiture of Shire's right to have the remainder protected by the attorney-client privilege and the work-product doctrine.
Before filing this Opinion, I am faxing it to the attorneys. If either side believes that any portions should be redacted from the publicly filed Opinion, they must fax me their reasons within two business days.
In this patent infringement case, the Stipulated Protective Order was signed by Judge Marrero on August 1, 2003 (Ex. A). It provided as follows. Each party could designate any document as Confidential Information. Such information was to be "used solely for the purpose of this action." It was to be disclosed only to Qualified Persons, a category that included all outside counsel of record, and two eligible in-house attorneys for Barr, and:
Two in-house attorneys for Shire, namely Tatjana May and Shona McDiarmid, who, after receipt of Barr Confidential Information, and in addition to the other terms of this protective order, (A) shall not be involved in the preparation or prosecution of any patent application that covers Adderall XR ... or Barr's generic version of Adderall XR ... for the duration of the action including appeals, and (B) shall not disclose to the FDA Barr's Confidential Information.
(Ex. A, p. 3, ¶2(g)(I).) It appears to be undisputed that "after receipt" means "after receipt by said in-house attorney."
In September 2003, Barr began producing its Confidential Information to Shire's outside counsel. Shire's outside counsel writes:
As this litigation unfolded, Shire's in-house counsel concluded that there was no need [for in-house counsel] to review Barr confidential information. Thus, neither Dr. McDiarmid nor Ms. May executed a declaration and agreement to be bound by the protective order [as would have been required by ¶11(b)].
(Edgar Haug's 2/7/06 letter, p. 3.) It appears that the Barr team chose to proceed somewhat differently. One of the two eligible in-house attorneys for Barr was Frederick Killion; he signed such a declaration. Barr's outside counsel have chosen, to date, not to show him any confidential Shire documents, but they may have orally told him some Shire Confidential Information. (3/22/06 Tr. 6-8.)
On July 8, 2004, two of Shire's outside counsel (Peter Bensinger, Jr. of the Bartlit firm in Chicago, and Sandra Kuzmich of the Frommer firm in New York) worked together to prepare two documents: Shire's First Supplemental Responses to Interrogatories Nos. 1 and 13 (Ex. B), and Shire's Second Supplemental Responses to Interrogatories Nos. 2 and 14 (Ex. C). Each of those two Responses had two signature pages, signed by Frommer's Edgar Haug and by in-house attorney Shona McDiarmid. On Ex. B, Mr. Haug's signature was preceded by no preamble; on Ex. C, it was preceded by the phrase "Submitted as to objections stated above." (See 3/22/06 Tr. 12.) On both Ex. B and Ex. C, Ms. McDiarmid's signature was on a separate page, and was preceded by these words:
I hereby verify under penalty of perjury under the laws of the United States of America that the answers in the foregoing ... are true and correct to the best of my knowledge and belief.
Ex. B consisted primarily of a claim chart (small portions of which referred to Barr Confidential Information) and two exhibits. Ex. C consisted primarily of a claim chart (large portions of which referred to Barr Confidential Information) and three exhibits (one of which was Barr Confidential Information).
Five months later, Barr's counsel stated (in Ex. F, by strong implication) his understanding that Ms. McDiarmid had received Barr Confidential Information. Shire's counsel promptly denied this (Ex. S) and in January 2005 provided declarations from Ms. McDiarmid, Ms. Kuzmich and Mr. Bensinger (Exs. K, L, M). Ms. McDiarmid's declaration (Ex. L) said, in part:
8. Prior to signing the [7/8/04] Verification [to Ex. C] I did not review the written text of the interrogatory responses, which were prepared by Shire's outside counsel.
9. Prior to signing the Verification I had discussions with Shire's outside counsel regarding the response. During these discussions no Barr confidential ...