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In re Rivastigmine Patent Litigation

August 8, 2006

IN RE RIVASTIGMINE PATENT LITIGATION


The opinion of the court was delivered by: James C. Francis IV, United States Magistrate Judge

MEMORANDUM AND ORDER

This multidistrict litigation concerns the patent rights for rivastigmine tartrate ("rivastigmine"), the active ingredient in Exelon, a medication marketed by Novartis Pharmaceutical Corporation ("NPC") for the treatment of mild to moderate dementia of the Alzheimer's type. NPC, together with Novartis Pharma AG, Novartis International Pharmaceutical Ltd., and Proterra AG (collectively, "Novartis"), has brought actions alleging that the defendants, Dr. Reddy's Laboratories, Ltd. and Dr. Reddy's Laboratory, Inc. (collectively, "Dr. Reddy"), Watson Pharmaceuticals Inc. and Watson Laboratories, Inc. (collectively, "Watson"), and Sun Pharmaceutical Ltd. ("Sun"), have induced infringement of two patents owned by Novartis by seeking approval from the Food and Drug Administration to market generic versions of Exelon.*fn1

The defendants seek to compel production of numerous communications that the plaintiffs have withheld primarily on the basis of attorney-client privilege.*fn2 The communications now at issue fall into four categories.

The first category has been termed the "Swiss Motion" documents. In July 2005, the defendants submitted a motion requesting, among other things, disclosure of communications between Swiss patent agents and their clients, Swiss in-house counsel and their clients, or European patent attorneys and their clients. (Letter of Maurice N. Ross dated July 21, 2005 ("Ross 7/21/05 Ltr." or "Swiss Motion")). This motion was denied in relevant part on September 22, 2005, without prejudice to renew with reference to a more specifically identified group of documents. In that decision, I authorized the defendants to serve, and I ordered the plaintiffs to answer, special interrogatories providing more information about the documents for which the plaintiffs claim privilege. In December 2005, after interrogatories were served and answered but further disagreements developed between the parties, I ordered the defendants to produce all underlying Swiss Motion documents to the Court for in camera review. In January 2006, I found that the information provided by the plaintiffs to the defendants remained inadequate, and I ordered the plaintiffs to provide the defendants with additional information regarding the legal qualifications of the relevant legal professionals, as well as to provide interrogatory answers for all documents not referenced in the Swiss Motion.

The second category of documents relates to a separate motion to compel. In September 2005, the defendants requested the production of documents on the basis of alleged deficiencies in the plaintiffs' privilege log. (Letter of Maurice N. Ross dated September 28, 2005 ("Ross 9/28/05 Ltr.," or "Privilege Log Motion"); see Documents Subject to Defendants' September 28, 2005 Letter, annexed as Appendix 2 to Letter of Diego Scambia dated Dec. 9, 2005 ("Scambia 12/9/05 Ltr.")). On November 21, 2005, I denied the defendants' motion to require the plaintiffs to submit a revised privilege log but ordered the plaintiffs to serve the defendants and the Court with: a letter providing sufficient information for each individual document to justify the assertion of privilege, including, for example, identification of a particular author or recipient as an attorney admitted to the bar in the United States, a U.S. patent agent, a Swiss patent attorney, a French patent agent, and so on. Where specific information is unavailable, the plaintiffs shall provide any circumstantial evidence that supports a finding of privilege. (Nov. 21, 2005, Order). I also ordered the plaintiffs to submit all documents disputed in the Privilege Log Motion to the court for in camera review.*fn3

The third category of documents is a subset of the documents referenced in the Privilege Log Motion. The plaintiffs contend that a large quantity of the withheld communications pertain to foreign patent prosecutions. For those documents, rather than providing a traditional, itemized privilege log, the plaintiffs served the defendants and filed with the Court a categorical log. (Letter of Diego Scambia dated Dec. 30, 2005 ("Scambia 12/30/05 Ltr." or "Scambia Letter of December 30, 2005"), Exh. 2). In response, the defendants argued in their Privilege Log Motion that the categorical format did not provide the information they needed to assess potential objections to the plaintiffs' assertions of attorney-client privilege. In my November 21 Order, I sanctioned the use of a categorical log, but only under certain conditions:

In justifying the assertion of privilege [], the plaintiffs may treat these documents by category. However, to the extent that I find any categorical justification inadequate, all documents within the category shall be ordered produced. Further, to the extent that I find any individual document to have been improperly classified within a category, that document shall be ordered produced without further individual review. (Nov. 21, 2005, Order) (emphasis added).

The plaintiffs have identified a fourth category of documents (the "category four documents") that they claim were newly challenged by the defendants on February 22, 2006. (Scambia 3/24/06 Letter at 2 n.3; Plaintiffs' January 20 Privileged Documents Defendants Now Challenge, attached as Exh. 4 to Scambia 3/24/06 Letter). The defendants' challenges are not new, however. Rather, they are the same objections raised in the Swiss Motion and the Privilege Log Motion. Granted, the defendants have added new documents, but they have not asserted new legal arguments. In particular, the privilege issues governing communications involving European patent attorneys and Swiss in-house attorneys-at-law have been amply briefed. To the extent the newly identified documents involve such communications, the rulings below govern. With respect to other newly identified documents, the plaintiffs are directed to reconsider their privilege claims, and the defendants their corresponding objections. Within two weeks of this Order, the parties are directed to submit to the Court a stipulation with respect to the category four documents. If the parties are unable to agree concerning any document, the parties shall include with their submission a list of the unresolved category four documents and, for each, a brief but clear statement highlighting the legal and factual bases of the disagreement.

Discussion

The attorney-client privilege functions "to encourage full and frank communication between attorneys and their clients." United States v. Zolin, 491 U.S. 554, 562 (1989). As the Supreme Court has explained, the attorney client privilege "exists to protect not only the giving of professional advice to those who can act on it but also the giving of information to the lawyer to enable him to give sound and informed advice." Upjohn Co. v. United States, 449 U.S. 383, 390 (1981). Courts recognize as privileged both communications by the client to the attorney and legal advice rendered by the attorney to the client, at least to the extent that the advice reflects confidential communications between the two. In re Six Grand Jury Witnesses, 979 F.2d 939, 943-44 (2d Cir. 1992); National Broadcasting Co. v. United States Small Business Administration, 836 F. Supp. 121, 125 (S.D.N.Y. 1993). Federal courts continue to define the elements of the attorney-client privilege using the formulation that Judge Wyzanksi articulated in United States v. United Shoe Machinery Corp., 89 F. Supp. 357, 358-59 (D. Mass. 1950):

The privilege holds only if (1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication was made (a) is a member of the bar of a court, or his subordinate and (b) in connection with this communication is acting as a lawyer; (3) the communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily either (i) an opinion on law or (ii) legal services or (iii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client.

See, e.g., Softview Computer Products Corp. v. Haworth, Inc., No. 97 Civ. 8815, 2000 WL 351411, at *2 (S.D.N.Y. March 31, 2000); Bank Brussels Lambert v. Credit Swiss Lyonnais (Suisse) S.A., 160 F.R.D. 437, 441 (S.D.N.Y. 1995).

"It is axiomatic that the burden is on a party claiming the protection of a privilege to establish those facts that are the essential elements of the privileged relationship, a burden not discharged by mere conclusory or ipse dixit assertions." In re Grand Jury Subpoena Dated Jan. 4, 1984, 750 F.2d 223, 224-25 (2d Cir. 1984) (citations and internal quotation marks omitted); accord von Bulow by Auersperg v. von Bulow, 811 F.2d 136, 144 (2d Cir. 1987); Golden Trade, S.r.L. v. Lee Apparel Co., 143 F.R.D. 514, 523 (S.D.N.Y. 1992). As the proponent of the attorney-client privilege in this case, Novartis "has the burden of establishing the attorney-client relationship and the applicability of the privilege to the particular circumstances and discovery requests." P.& B. Marina, Ltd. v. Logrande, 136 F.R.D. 50, 53-54 (E.D.N.Y. 1991), aff'd, 983 F.2d 1047 (2d Cir. 1992).

A. Swiss Motion Documents

The attorney-client privilege of course requires the participation of an "attorney." A legal professional generally must be admitted to the bar of a state or federal court to qualify as an attorney. See, e.g., A.I.A. Holdings, S.A. v. Lehman Brothers, Inc., No. 97 Civ. 4978, 2002 WL 31385824, at *4 (S.D.N.Y. Oct. 21, 2002). However, when analyzing communications with foreign attorneys and patent agents, courts engage in a form of traditional choice-of-law "contacts" analysis to determine whether to defer to the privilege laws of another nation:

If a communication with a foreign patent agent involves a U.S. patent application, then U.S. privilege law applies, and communications on that subject with a patent agent are not privileged, unless the foreign agent is acting under the authority and control of a U.S. attorney, because such foreign agents are not attorneys entitled to practice United States law . . . . If a communication with a foreign patent agent involves a foreign patent application, then as a matter of comity, the law of that foreign country is considered regarding whether that law provides a privilege comparable to the attorney/client privilege.

Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., No. 95 Civ. 8833, 1998 WL 158958, at *1 (S.D.N.Y. April 2, 1998) (citations omitted). In a patent matter involving clients, attorneys, and patent applications of diverse nations, the law of multiple countries may be involved. In such cases, courts look to the law of the country where the patent application is pending. See, e.g., Golden Trade, 143 F.R.D. at 520-21 (where communications between Italian corporation and patent agents in Norway, Israel, and Germany concerned patent applications in agents' respective countries, court chose law of the country where patent agent offered services); Detection Systems, Inc. v. Pittway Corp., 96 F.R.D. 152, 156 (W.D.N.Y. 1982) (where Japanese agent communicated with client through U.K. patent agent, Japanese law governed); Johnson Matthey, Inc. v. Research Corp., No. 01 Civ. 8115, 2002 WL 1728566, at *9 (S.D.N.Y July 24, 2002) (in diversity case involving British agent and U.S. client, British law governed communications concerning British legal proceeding and New York law governed communications concerning obligations arising under U.S. contract); In re Philip Services Corp. Securities Litigation, No. 98 Civ. 0835, 2005 WL 2482494, at *2 (S.D.N.Y. Oct. 7, 2005) (U.S. law governed where Canadian professional in Canada advised on public offering in U.S.); Aktiebolag v. Andrx Pharmaceuticals, Inc., 208 F.R.D. 92, 99 (S.D.N.Y. 2002) (U.S. law governed communication between Swedish in-house counsel and Korean counsel regarding U.S. patent application).

The plaintiffs claim that Swiss law governs the vast majority of the documents addressed in the Swiss Motion, and the defendants agree. (Letter of Diego Scambia dated December 22, 2005 ("Scambia 12/22/05 Ltr.") at 6; Letter of Maurice N. Ross dated Aug. 5, 2005 ("Ross 8/5/05 Ltr.") at 4).*fn4 I will therefore assume without deciding that the Swiss Motion documents are governed by Swiss law, except as noted in the Appendix to this Order. The defendants have submitted to the Court a list of the communications for which the plaintiffs' privilege claims are predicated on the involvement of a Swiss, in-house patent agent or attorney. (Ross 2/22/06 Ltr. at 10 & Appendix E). Given that the plaintiffs have not objected to the characterizations of the legal professionals contained in this list, I will use it to facilitate a categorical ruling on the Swiss Motion documents.

1. Swiss Law Regarding Patent Agents

Whether Swiss law recognizes a privilege for patent agents remains unsettled. See, e.g., Variable-Parameter Fixture Development Corp. v. Morpheus Lights Inc., No. 90 Civ. 5593, 1992 WL 203865, at *1 (S.D.N.Y. Aug. 12, 1992) (finding status or privilege under Swiss law unclear); Burroughs Wellcome Co. v. Barr Laboratories, Inc., 143 F.R.D. 611, 624 (E.D.N.C. 1992) (finding letter from Swiss patent attorney to European patent attorney privileged on the basis of unopposed declaration stating that Swiss privilege law covers communications between clients and patent agents); Attorney-Client Privilege and the Patent and/or Trademark Attorneys Profession: Answer of the Swiss Group, Questionnaire of the International Association for the Protection of Intellectual Property dated May 2002 (ascertaining from Swiss members of association that patent agents are not protected by privilege), available at http://www.aippi.org/reports/q163/quest02/q163 _switzerland.pdf.

Even if there is some confidentiality protection for communications between clients and attorneys or patent agents in Switzerland, that protection may not be comparable to the attorney-client privilege in the United States. Novartis has maintained that Swiss legal professionals are bound by a professional secrecy obligation, the violation of which could result in sanctions. However, professional secrecy obligations are not coextensive with the attorney-client privilege. The former is a professional's ethical obligation to his client; the latter is an evidentiary privilege of non-disclosure. In many jurisdictions around the world, a court may order disclosure if it determines that the need for the information is sufficient to outweigh the secrecy obligation, while the privilege, in contrast, is absolute and inviolate. Bristol-Myers, 1998 WL 158958, at *2-3 (U.S. attorney-client privilege is absolute protection distinct from secrecy obligations of bankers, telephone companies, and others who must keep trade secrets private; French secrecy laws not comparable because not enforceable against judicial or administrative investigations or against courts); Bristol-Myers Squibb Co. v. Rhone Poulenc Rorer, Inc., 188 F.R.D. 189, 199-201 (S.D.N.Y. 1999) (French patent agent can be ordered to turn over documents while avocat can refuse; secrecy obligation is part of French disciplinary rules, which say nothing about disclosure to court); Bayer AG v. Barr Laboratories, Inc., No. 92 Civ. 0381, 1994 WL 705331, at *5-6 (S.D.N.Y. Dec. 16, 1994)(master's finding of patent attorney-client privilege remanded because secrecy obligation is not equivalent to attorney-client privilege) (citing Alpex Computer Corp. v. Nintendo Co., No. 86 Civ. 1749, 1992 WL 51534, at *2, *6 (S.D.N.Y. March 10, 1992)); Eisai Ltd. v. Dr. Reddy's Laboratories, Inc., 406 F. Supp. 2d 341, 343 (S.D.N.Y. 2005) (privilege exists under Japanese law because benrishi, legal professionals who act, essentially, as patent agents, may refuse to testify about facts they should keep secret and holder of documents can refuse to produce them); VLT Corp. v. Unitrode Corp., 194 F.R.D. 8, 19 (D. Mass. 2000) (privilege exists under British law because neither solicitor nor client can be compelled to disclose confidential communications); Golden Trade, 143 F.R.D. at 524 (privilege exists under German law because German court cannot compel patent attorney to disclose communications and parties may not obtain copies of related documentation; privilege also exists under Israeli law because laws of Israel do not permit forced disclosure of communications by or to an attorney).

2. Swiss Law Regarding In-House Counsel

The Swiss legal professionals involved in the communications at issue are employees of the client corporation. Therefore, the question is whether Swiss law recognizes a privilege, comparable to the attorney-client privilege in the United States, for in-house attorneys and patent agents. This question must be answered in the negative.

Even if I were to assume that the confidentiality laws governing Swiss legal professionals create a privilege comparable to the attorney-client privilege in the U.S., Swiss confidentiality protections do not apply to communications with in-house counsel. See Robert Furter & Michael Kramer, Lex Mundi, Ltd., In-House Counsel and the Attorney-Client Privilege: A Lex Mundi Multi-Jurisdictional Survey 66-67 (2004), available at http:// www.lexmundi.com/images/lexmundi/PDF/AttyClient/Switzerland.pdf; see also Triplett Mackintosh & Kristen M. Angus, Conflict in Confidentiality: How E.U. Laws Leave In-House Counsel Outside the Privilege, 38 Int'l Law. 35, 39-40, 53-54 (2004); cf. Bristol-Myers, 188 F.R.D. at 201 (French in-house patent agents, as salaried employees who do not offer their services to the public on a confidential basis, are not equivalent to external agents and not covered by French secrecy laws). The primary reason for excluding in-house counsel from the privilege is a "deep-seated suspicion of the independence of in-house counsel." Mary C. Daly, The Ethical Implications of the Globalization of the Legal Profession: A Challenge to the Teaching of Professional Responsibility in the Twenty-First Century, 21 Fordham Int'l L. J. 1239, 1279 (1998).

The in-house lawyer, who is already balancing competing interests as an officer of the court and advocate for the corporation, is also an employee of the corporation. . . . The concern is that when a lawyer is dependent on the client for his livelihood, he will be less likely to exercise objective counseling because he has too great an interest in the outcome of his advice.

MacKintosh & Angus, supra, at 39, 40. While the wisdom of this approach has been questioned, it remains the law in Switzerland. See, e.g., Furter & Kramer, supra, at 66-67. Although the materials presented by the defendants apply to lawyers, it seems reasonable to assume that the same issues concerning independence of judgment would arise with respect to in-house patent agents.

As the proponent of the privilege, the plaintiffs maintain the burden of establishing the applicability of foreign privilege laws. See Bristol-Myers, 188 F.R.D. at 200 (proponent "failed to establish that there exists under French law a patent agent privilege comparable to the United States attorney-client privilege"); Bristol-Myers, 1998 WL 158958, at *3 (without citation to relevant statute or cases, declaration's reference to French "practices 'of which the declarant is aware'" is insufficient to establish French law, and proponent "has not carried its burden of showing that a privilege equivalent to the attorney/client privilege exists in France for French patent agents"); Variable-Parameter, 1992 WL 203865, at *1 (finding plaintiff had not "met its burden of demonstrating the existence of foreign law protecting the confidentiality of communications with patent agents" under Swiss law); Burroughs Wellcome, 143 F.R.D. at 621 (where plaintiff cited cases but "did not submit any affidavits on the issue of Canadian privilege law . . . [and the defendant had submitted an affidavit addressing Canadian law,] the plaintiff ha[d] not met its burden of establishing the existence of an attorney-client privilege under Canadian law"); SmithKline Beecham Corp. v. Apotex Corp., 193 F.R.D. 530, 535 (N.D. Ill. 2000) ("The burden is on the party asserting the privilege to provide the court with the applicable foreign law, and demonstrate that the privilege applies to the documents it seeks to exclude from discovery."), rev'd in part on other grounds, No. 98 C 3952, 2000 WL 1310669, at *5 (N.D. Ill. Sept. 13, 2000); In re Ampicillin Antitrust Litigation, 81 F.R.D. 377, 391 n.26 (D.D.C. 1978) (no restriction on discovery without evidence of specific privilege under laws of relevant country); see also Bayer AG, 1994 WL 705331, at *4 (noting that special master's determination of foreign law relied on documents submitted by proponent of privilege); Alpex Computer, 1992 WL 51534, at *2-3 (where "[n]othing in the statutory language extends the privilege" and proponent "has failed to offer any Japanese decisions that have filled [the statutory] 'gaps,'" there was "nothing to convince" the court that Japanese law provided for a patent agent-client privilege); but cf. Golden Trade, 143 F.R.D. at 524 n.5 ("[I]t is not necessarily the case that the plaintiffs here bear a burden of proof [on foreign law], but even if they do, they have met it, particularly in the absence of any substantive response by the defendants.").

In support of its privilege claims under Swiss law, Novartis provides two declarations from Felix H. Thomann. (Declaration of Felix H. Thomann dated July 29, 2005 ("Thomann 7/29/05 Decl.") & Supplemental Declaration of Felix H. Thomann dated Aug. 18, 2005 ("Thomann 8/18/05 Decl."), both submitted under Tab 29 of Plaintiffs' Declarations on Foreign Law dated Dec. 30, 2005 ("Pl. Foreign Law Binders")). Mr. Thomann does not directly challenge the basic premise that Swiss law distinguishes between in-house and external counsel with regard to the attorney-client privilege. Instead, he asserts that, as employees, in-house attorneys and patent agents are bound by a secrecy obligation, the violation of which could expose them to sanctions. (Thomann 8/18/05 Decl., ¶ 6 (citing Schweizeriches obligationenreght ("OR") arts. 321a, 398)).

Title Ten of the Swiss Federal Code of Obligations (the "Employment Contract Law") provides as follows:

In the course of an employment relationship, the employee shall not make use of or inform others of any facts to be kept secret, such as, in particular, manufacturing or business secrets that come to his knowledge while in the employer's service. Also, after termination of the employment relationship, he shall continue to be bound to secrecy to the extent required to safeguard the employer's legitimate interests.

OR art. 321a (internal citations omitted and emphasis added). But this demonstrates, at most, an ethical obligation of secrecy, which, as discussed above, is not identical to an evidentiary privilege of non-disclosure.

Mr. Thomann argues that, under Basel-City Civil Procedure 221.100, § 116, a witness may refuse to testify if testifying would expose him to "a direct and serious disadvantage." Mr. Thomann asserts that the risk of sanctions for violating the Employment Contract Law should qualify as such a disadvantage. (Thomann 7/29/05 Decl. ¶ 4; Thomann 8/18/05 Decl.) This argument is not supported by any case or statute and cannot prevail.

Article 16 of the Swiss Federal Act of Administrative Procedure, 172.021, art. 16, indicates that the "right to refuse to give testimony is determined by Article 42, Paragraphs 1 and 3 of [the Swiss] Federal Act on Federal Civil Procedure (BZP)" and the "bearer of a professional or trade secret, in the sense of Article 42 Section 2 BZP, may refuse to testify, insofar as another federal law does not require him to testify," but, unfortunately, the plaintiffs did not provide me with a copy of Article 42.

On the topic of the "Right to Refuse Testimony," the plaintiffs did provide an excerpt of the Basel-City Civil Procedure:

Testimony 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. members and secretaries of the cantonal arbitration boards for questions of discrimination, concerning legal disputes negotiated before the arbitration board. Basel-City Civil Procedure, 221.100, § 116 (emphasis added). This statute specifies those professionals who may refuse to give testimony (notably including attorneys but not patent agents), rather than providing a blanket protection for all employees covered by the Employment Contract Law. Had the legislators intended to include all employees within the reach of this provision, they would not have specified particular professionals eligible for the testimonial privilege; similarly, had the drafters understood that all employees might refuse to testify about confidential matters, they would have considered this civil procedure section superfluous. This statute therefore weakens the plaintiffs' argument that all employees bear the right to refuse to testify concerning business secrets.

Finally, the plaintiffs have argued that the mandatory disclosure of documents is quite limited in civil litigation in Switzerland, and that a Swiss court would not order production of the documents demanded in this litigation. See, e.g., Basel-City Civil Procedure, 221.100, § 109 (outlining basic requirements of document production). However, the "contacts" approach to determinations of privilege involving foreign legal professionals does not adopt wholesale the discovery rules and procedures of the foreign jurisdiction. Its aim is only, as a matter of comity, to recognize a privilege where one has been carved out under the foreign law. Whether Swiss discovery procedures are generally comparable to those in the United States is not the focus of the analysis: the precise legal question is whether a special evidentiary privilege, comparable to the American attorney-client privilege, has been recognized in Swiss law.

I agree with Novartis that special problems arise when evaluating the attorney-client privilege of foreign jurisdictions whose discovery systems are not comparable to our own. "[T]o apply [foreign] privilege law, or the lack thereof, in a vacuum --without taking account of the very limited discovery provided in [the foreign jurisdiction's] civil cases -- would offend the very principles of comity that choice-of-law rules were intended to protect." Aktiebolag, 208 F.R.D. at 102. In Aktiebolag, the court determined that, given this problem, and given that many of the documents requested in that case would have been privileged under American law, U.S. law should govern. Id. In this case, however, the absence of privilege results not from the lack of comparability of the Swiss and U.S. legal systems, but from the fact that Swiss law specifically excludes the documents at issue from the privilege it recognizes. Even if I determined that Swiss law provided for an attorney-client and patent agent-client privilege comparable to that in the United States, which I do not, the relevant documents would still be discoverable because the legal professionals involved in their preparation were employees of the client.

For all documents governed by Swiss law, where the legal professional involved was an employee of the client, those documents must be disclosed. These documents are listed in the Appendix to this Order.

3. Communications Involving Martin Lutz

The disclosure of five communications is disputed on the basis that Martin Lutz, the attorney-at-law who participated in these communications with the client Sandoz/Novartis, was a director of Proterra, A.G. at the time. (Proterra was an entity controlled by Sandoz, the predecessor of Novartis.) The defendants concede that "[n]ormally, Mr. Lutz' status as outside counsel would be sufficient under Swiss law to confer the existence of a privilege for his communications with his clients," but they argue that "'attorneys in private practice . . . who act as directors in Swiss or foreign corporations cannot call upon the attorney-client privilege for their directorship activities.'" (Ross 2/22/06 Ltr. at 18 (quoting Furter & Kramer, supra, at 67)). The plaintiffs concede that Mr. Lutz had served as inside counsel and director of plaintiff Proterra, A.G. (Declaration of Martin Lutz dated March 16, 2006 ("Lutz Decl."), attached as Exh. 23 to Scambia 3/24/06 Ltr., ¶ 3). However, they contend that Mr. Lutz also represented Sandoz and Novartis as outside counsel, and they argue that Mr. Lutz functioned in this role while engaging in the communications at issue. (Lutz Decl., ¶¶ 3, 17). After in camera inspection, it appears that the documents do not concern Mr. Lutz's "directorship activities," but rather include legal advice or requests for it. The defendants have provided no argument as to why such materials should not be privileged. The five documents involving Mr. Lutz are privileged and need not be disclosed.

B. Privilege Log Motion 1.

Communications Between Non-Attorneys The next category of documents consists of those where the author or recipient is a patent agent or other non-attorney allegedly working at the direction of a licensed U.S. attorney (or at the direction of a patent agent allegedly working at the direction of an attorney).

[T]he attorney-client privilege is not limited to communications directly between the client and the attorney. Rather, if the purpose of the communication is to facilitate the rendering of legal services by the attorney, the privilege may also cover communications between the client and his attorney's representative, between the client's representative and the attorney, and between the attorney and his representative.

Golden Trade, 143 F.R.D. at 518. The Second Circuit has explained that "[w]hat is vital to the privilege is that the communication be made in confidence for the purpose of obtaining legal advice from the lawyer." United States v. Kovel, 296 F.2d 918, 922 (2d Cir. 1961).

The defendants challenge the assertion of privilege for communications authored or received by the following individuals:

(1) Joseph Borovian, a patent agent registered in the United States and employed by Novartis; (2) Thomas O. McGovern, a patent agent registered in the United States and formerly employed by Novartis or its predecessor; or (3) Linda C. Rothwell, an employee of Novartis or its predecessors. The defendants also challenge the assertion of privilege for several miscellaneous communications. (Scambia 3/24/06 Ltr. at 30).

a. Communications Involving Joseph Borovian

In an order dated January 5, 2006, I held that certain documents containing communications to or from Mr. Borovian were privileged because Mr. Borovian was acting under the supervision of counsel at the time of the communications. I decline to re-examine those findings. The defendants request disclosure of one additional document involving Mr. Borovian.

Document 652 was written as a collaborative effort among various members of the Novartis Patent and Trademark Department, including attorneys, patent agents, and perhaps others, and was apparently circulated among the members of that department. (Declaration of Thomas Hoxie dated March 21, 2006 ("Hoxie Decl."), attached as Exh. 38 to Scambia 3/24/06 Ltr., ¶ 9). The document includes handwritten notes by an unidentified author. The plaintiffs claim both work product immunity and attorney-client privilege for this document. Novartis asserts that Joseph Borovian, under the supervision of U.S. attorney Thomas Hoxie, drafted portions of it, and that the other portions were prepared by the client, at Mr. Borovian's or Mr. Hoxie's request, so that they could provide legal advice.

As for the claim of work product immunity, there is no evidence that this document was prepared in anticipation of litigation. In his declaration in support of the plaintiffs' opposition to disclosure, Mr. Hoxie made the general statement that the "purpose of [summaries of patent situations] was to serve as an aid to formulating legal advice and opinions to be provided to Novartis management, as an aid to developing and implementing strategies for patent protection and enforcement, and as a basis for discussions with the responsible attorneys and agents." (Hoxie Decl., ¶ 9). He makes no mention of any anticipated litigation. The communication is "not protected by the work product doctrine simply because an issued patent may give rise to an infringement action." Softview, 2000 WL 351411, at *5. Document 652 is not protected from disclosure by the work product doctrine.

It may, however, still be protected from disclosure by the attorney-client privilege. Communications among non-attorneys in a corporation may be privileged if made at the direction of counsel, to gather information to aid counsel in providing legal services. See Upjohn, 449 U.S. at 396; Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 203 (E.D.N.Y. 1988); Eutectic Corp. v. Metco, Inc., 61 F.R.D. 35, 39 (E.D.N.Y. 1973). Of course, a document will not become privileged simply because an attorney recommended its preparation if it contains merely business-related or technical communications between corporate employees; in analyzing communications created at the direction of in-house counsel, courts must be wary that the involvement of the attorney is not being used simply to shield corporate communications from disclosure. Cuno, 121 F.R.D. at 204; P. & B. Marina, 136 F.R.D. at 57-58 (business updates not privileged); Rohm and Haas Co. v. Brotech Corp., 815 F. Supp. 793, 798 (D.C. Del. 1993) (no privilege where scientific lab memorandum copied, but not directed primarily, to patent counsel).

In this case, Mr. Hoxie maintains, as quoted above, that Document 652 was prepared to aid in formulating legal advice and providing legal services. (Hoxie Decl., ¶ 9). The document states on its face that it was "prepared on request of US counsel," and Mr. Hoxie has sworn to the accuracy of this representation. (Hoxie Decl., ¶ 9). The document is therefore privileged regardless of Mr. Borovian's professional title.

However, as explained further in the section below devoted to handwritten annotations, the existence of a privilege for handwritten notes on an otherwise privileged document must be analyzed separately. In the case of Document 652, the plaintiffs' privilege log simply acknowledges that the document "contain[s] handwritten annotations" without providing further information. Given Novartis's burden of establishing all elements of the privilege, this is of course insufficient. The handwritten annotations on Document 652 must therefore be disclosed.

b. Communications Involving Thomas McGovern

The plaintiffs have also asserted attorney-client privilege for communications authored or received by Thomas McGovern, a United States patent agent whom the plaintiffs allege was at all relevant times directly supervised by a licensed U.S. attorney. In support of these assertions, the plaintiffs have submitted deposition testimony from three sources -- Mr. McGovern, his direct supervisor prior to January 1993, and the head of the department in which Mr. McGovern was employed -- as well as a declaration from Mr. McGovern's direct supervisor for the period January 1993 to 1996. (Deposition of Thomas McGovern dated Nov. 10, 2005 ("McGovern 11/10/05 Dep."), attached as Exh. 41 to Scambia 3/24/06 Ltr.; Deposition of Thomas McGovern dated Nov. 9, 2005 ("McGovern 11/9/05 Dep."), attached as Exh. 42 to Scambia 3/24/06 Ltr.; Declaration of Melvyn M. Kassenoff dated March 20, 2006 ("Kassenoff Decl."), attached as Exh. 43 to Scambia 3/24/06 Ltr.; Deposition of Gerald Sharkin dated Dec. 5, 2005 ("Sharkin Dep."), attached as Exh. 44 to Scambia 3/24/06 Ltr.; Deposition of Robert Honor dated Jan. 5, 2006 ("Honor Dep."), attached as Exh. 45 to Scambia 3/24/06 Ltr.). The plaintiffs' allegations that Mr. McGovern was directly supervised by an attorney deserve particular scrutiny because the plaintiffs previously claimed, erroneously, that Mr. McGovern was the attorney whose participation provided the basis for the privilege. (Plaintiffs' Novartis Pharmaceuticals Corp., et al. Log of Privileged Documents dated June 30, 2005, attached as Exh. 3 to Scambia 12/9/05 Ltr. at 3; U.S. and Foreign Attorneys, Patent Attorneys, and Patent Agents Associated with Novartis EXELON Products, attached as Exh. 1 to Declaration of Patrick Crawley dated Jan. 20, 2006 ("Crawley 1/20/06 Decl."); Scambia 12/9/05 Ltr., at 4 n.5).

During his employment in the pharmaceutical group of the Sandoz/Novartis patent department, Mr. McGovern was supervised by licensed U.S. attorneys Gerald Sharkin, Robert Honor, and Melvyn Kassenoff. During Mr. McGovern's early years at Sandoz, Mr. Sharkin served as the head of the department, while Mr. Honor and Mr. Kassennoff led distinct groups within it. During that period, Mr. Honor functioned as Mr. McGovern's direct supervisor. (McGovern 11/9/05 Dep. at 30). In January 1993, Mr. Sharkin retired, and Mr. Honor replaced him as department head. (McGovern 11/9/05 Dep. at 30; Kassenoff Decl., ¶ 7). Mr. Kassenoff then took over Mr. Honor's division and assumed responsibility for supervising Mr. McGovern. (McGovern 11/9/05 Dep. at 30; Kassenoff Decl., ¶ 7). Mr. McGovern testified in his deposition that he could not recall when these personnel changes were made and could not confirm which attorney supervised him with regard to every communication, but he maintained that all of his patent prosecution work was supervised, and that, as a matter of policy, all of his written communications with the client were reviewed by the attorneys. (McGovern 11/9/05 Dep. at 29-32; McGovern 11/10/05 Dep. at 148).*fn5

Melvyn Kassenoff has submitted a declaration indicating that he is a licensed attorney who has been employed with Sandoz/Novartis since the early 1970's. He explains that from January 1993 to 1996 he maintained responsibility for the supervision of patent work, including Mr. McGovern's activities with respect to the prosecution of applications leading to U.S. Patent Letters No. 5,602,176 (the "'176 patent"), one of the two patents at issue in this litigation. (Kassenoff Decl., ¶¶ 7, 10). Mr. Kassenoff further declares that he has reviewed all relevant documents from the period of January 1993 to 1996 and that he directly supervised Mr. McGovern's work with respect to those communications. (Kassenoff Decl., ¶ 10). Mr. Kassenoff adds that Robert Honor served as Mr. McGovern's direct supervisor prior to Mr. Kassenoff's tenure and that Mr. Honor would have provided the same level of supervision.

Mr. Honor confirmed at his deposition that, when he served as a vice president of the patent department, he supervised Mr. McGovern, among others. He admitted that Mr. McGovern did not seek supervision every time he communicated with the client or with the patent examiner (Honor Dep. at 63-64) but maintained that, as a general matter, the two worked together on such matters, and he characterized the tasks Mr. McGovern may have completed without direct supervision as "simple, little things." (Honor Dep. at 65).

As I discussed in the Order of January 5, 2006, concerning the supervision of Joseph Borovian, supervision of a patent agent does not necessitate the attorney observing and approving every minute aspect of the work completed by the agent. Where the agent has developed a familiarity with both the patent application process in general and the inventor in particular, it makes sense for an agent to take responsibility for gathering information from the client without involving the attorney every step of the way. I am satisfied that Mr. McGovern was supervised by an attorney during his participation in the communications at issue, with exceptions identified below. Individual rulings for the documents involving Mr. McGovern are listed in the Appendix to this Order.

The majority of the documents described by both parties as "McGovern Documents," were the subject of additional objections by the defendants, because they were draft documents, notes written to "File," or handwritten notes overlaid on top of other documents. All three of these categories will be discussed further below, in sections specifically devoted to each topic, and the rulings will be listed in those categories.

There are a few miscellaneous McGovern Documents. Document 651 includes a redaction for relevance on the first page. This material is appropriately redacted and may be withheld because it concerns inventions unrelated to the subject matter of this litigation. Document 745 is privileged except for the handwritten notes, which have not been translated into English, cannot be analyzed, and therefore must be produced. See Aktiebolag, 208 F.R.D. at 106. Document 616 concerns media and business matters, not legal advice, and therefore this communication must be disclosed. See Burroughs Wellcome, 143 F.R.D. at 619 ("The business decision whether to pursue a patent is distinct from the legal advice concerning how to obtain the best patent protection; handling publicity and dealing with the media are typically business concerns.").

Finally, there is a group of documents not listed by either side as "McGovern Documents" yet described in the plaintiffs' privilege log as privileged due to the involvement of Mr. McGovern. Where there is sufficient evidence that Mr. McGovern was directly supervised by an attorney, those documents are privileged. However, in some cases, the plaintiffs' supplementary submissions list R. Laughlin, a U.S. attorney, as a participant in the communications, either in addition to or instead of Mr. McGovern, but there is no evidence of Mr. Laughlin's participation in the communications, nor of his taking any role in supervising Mr. McGovern's work. For those documents where no further information is provided, particularly because Mr. Laughlin was not mentioned until after the plaintiffs admitted that Mr. McGovern is a patent agent rather than an attorney, the plaintiffs have not met their evidentiary burden and no privilege can be found. These communications are included in the Miscellaneous section of the Appendix to this Order.

c. Communications Supervised By a Non-Attorney

The plaintiffs have asserted attorney-client privilege for 12 communications involving Linda Rothwell ("Rothwell Documents"), another non-attorney employee of Novartis and its predecessors, whom the plaintiffs claim was directly supervised by a licensed U.S. attorney or a patent agent. Ms. Rothwell has submitted a declaration in which she explains that she has occupied various positions in the Novartis/Sandoz patent department, including records clerk, patent administrator, docketing administrator, and head of the mail date group. (Declaration of Linda C. Rothwell dated March 23, 2006 ("Rothwell Decl."), attached as Exh. 46 to Scambia 3/24/06 Ltr.). Although she is neither an attorney nor a patent agent, if her work was directly supervised by an attorney, regardless of her title, her communications with clients may be covered by the attorney-client privilege.

Ms. Rothwell explains that during the period when the Rothwell Documents were produced, her work was reviewed by patent agent Thomas McGovern. (Rothwell Decl., ¶ 13). More specifically, she states that "[d]uring this time, I believe that the Sandoz legal professional in the U.S. responsible for these applications was Thomas McGovern." (Rothwell Decl., ¶ 12) (emphasis added). The plaintiffs allege that to the extent Ms. Rothwell was supervised by Thomas McGovern, Mr. McGovern was supervised by Mr. Honor or Mr. Kassenoff. (Scambia 3/24/06 Ltr. at 29-30). However, Ms. Rothwell makes no mention of either Mr. Honor or Mr. Kassenoff, and her recollection that Mr. McGovern was "the Sandoz legal professional . . . responsible for these applications" belies the assertion that any U.S. attorney supervised her work, or that of Mr. McGovern, with the closeness required to substantiate a claim of privilege for the Rothwell Documents. Even if I were to agree with the plaintiffs' assumption that the attorney-client privilege can apply to communications where the supervision by the attorney is one level removed from the individual communicating with the client, in this instance, the plaintiffs have not sustained their burden of showing that this was the case. All of the Rothwell Documents must be disclosed.

The plaintiffs have also claimed attorney-client protection for a document identified by number 966. The legal professional whose involvement allegedly gives rise to the privilege for this communication is described as "A. Koehler, U.S. Patent Administrative Assistant operating under direction of U.S. attorney and/or U.S. Patent Agent who in turn was operating under direction of U.S. attorney." (Declaration of Patrick Crawley dated March 21, 2006 ("Crawley 3/21/06 Decl."), attached as Exh. 47 to Scambia 3/24/06 Ltr., ¶ 23). The plaintiffs assert that the client sought legal advice "from one of the responsible legal professionals" through A. Koehler. (Crawley 3/21/06 Decl., ¶ 24). As with the Rothwell Documents, the plaintiffs are correct that communications between a client and a non-attorney reporting to an attorney may be privileged; however, the plaintiffs have failed to meet their evidentiary burden in this instance. Mr. Crawley admits that he "do[es] not know the particular U.S. legal professional to whom this was directed" but insists that "the request was made to obtain the advice of a U.S. attorney or U.S. patent agent working at the direction of an attorney." (Crawley 3/21/06 Decl., ¶ 24). He has demonstrated no basis for his assertion, particularly with respect to the direct supervision of the unnamed patent agent by an unnamed attorney. Document 966 must be disclosed.

2. Documents Addressed to "File"

The plaintiffs claim attorney-client privilege for a number of documents whose recipients the plaintiffs describe as the files of the author. The plaintiffs contend that although these documents may not themselves constitute communications, they reflect and record previous or contemporaneous privileged communications.

A memorandum to a file may be protected where it records a confidential attorney-client communication. See, e.g., Colton v. United States, 306 F.2d 633, 639 (2d Cir. 1962); Note Funding Corp. v. Bobian Investment Co., No. 93 Civ. 7427, 1995 WL 662402, at *7 (S.D.N.Y. Nov. 9, 1995); Polycast Technology Corp. v. Uniroyal, Inc., 125 F.R.D. 47, 49 (S.D.N.Y. 1989); SCM Corp. v. Xerox Corp., 70 F.R.D. 508, 523 (D. Conn. 1976). While the plaintiffs' privilege log may not have in all instances provided adequate information to illustrate the propriety of the privilege assertion, the text of some of the documents has revealed they were in fact created to record privileged communications. Nevertheless, although the documents themselves need not be communications to deserve the protection of the attorney-client privilege, the plaintiffs retain the burden of establishing all elements of the privilege's applicability to any underlying communication, and where the plaintiffs have failed to meet that burden, no privilege could be found. There is no such evidence for a number of documents, and the Appendix lists those that must be disclosed.

3. Documents Where Legal Professional Not Specified

The plaintiffs claim attorney-client privilege for a number of documents for which the plaintiffs have listed a department as the legal professional whose involvement gives rise to the privilege. The obvious problem with these documents is that only communications with attorneys and those working under their direct supervision are entitled to the attorney-client privilege. Without information identifying the individuals involved in the particular communications, it is impossible for the plaintiffs to meet their burden of establishing the "attorney" element of the attorney-client privilege. See, e.g., In re Derienzo, Nos. 5-96-01186, 5-96-00248A, 5-96-01220, 5-46-00254A, 5-96-00789, 5-96-00270A, 5-96-00938, 5-96-00266A, 1998 WL 283201, at *7 (M.D. Pa. April 28, 1998) (attorney-client privilege unavailable where documents' authors were unknown).

I recognize the difficulties facing the plaintiffs in attempting to trace the long history of the voluminous documents at issue, but without further information there is no way for a court to evaluate the documents, and no privilege can be upheld. The attorney-client privilege is an exception to the general presumption of disclosure, and protecting the privileged status of documents therefore requires, among other things, drafting them in such a way that a court will be able assess the applicability of a privilege claim even when a dispute arises two decades after the communication.

The case of A.I.A. Holdings, 2002 WL 31385824, at *3-6, cited by the plaintiffs for the proposition that the failure to identify specific professionals within a department should not be fatal to a claim of privilege, in fact held that the level of detail required in response to a motion to compel is higher than that required to satisfy Rule 26(b)(5) of the Federal Rules of Civil Procedure and Local Civil Rule 26.2. This approach "properly allocates the burden of proof and saves the ...


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