UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
FEDERAL TRADE COMMISSION, :
:
Petitioner, :
:
v. : Misc. Action No. 09- 564 (JMF)
:
BOEHRINGER INGELHEIM :
PHARMACEUTICALS, INC., :
:
Defendant. :
:
MEMORANDUM OPINION
This matter was assigned to me for all purposes. Pending before me now is the Petition
of the Federal Trade Commission for an Order Enforcing a Subpoena Duces Tecum [#1]. 1 The
Federal Trade Commission (“FTC”) seeks an order from this Court declaring that the documents
requested in its subpoena duces tecum are not privileged under the attorney-client privilege or the
work product doctrine, as claimed by respondents, Boehringer Ingelheim Pharmaceuticals, Inc.
(“BIPI”), and requiring the respondent to turn over the documents within 10 days of this order.
In light of the record before me and for the reasons stated herein, plaintiff FTC’s petition will be
denied as to certain categories of documents as set forth below. For all others, BIPI will be
ordered to redact privileged material and disclose the rest, if it has not already done so.
I. BACKGROUND
The subpoena filed by the FTC is part of an investigation into a settlement agreement in a
separate, prior lawsuit between BIPI and a generic drug manufacturer, Barr Laboratories.
Memorandum in Support of Petition of the Federal Trade Commission for an Order Enforcing a
1
The first reference to pleadings and other filings in this docket will include the name of the
document and the docket number. All subsequent references to the same document will include
the docket number only.
Subpoena Duces Tecum [#1-4] at 1-2. The investigation, in short, is looking into allegations that
BIPI and Barr engaged in unfair trade practices. Id.
BIPI manufactures two brand-name drugs, Aggrenox and Mirapex. Id. at 4. Barr
developed generic versions of these drugs and received FDA approval to market the generic
versions, leading to litigation by BIPI alleging patent infringement. See Boehringer Ingelheim
Inter. gmbH v. Barr Labs., 562 F. Supp. 2d 619, 622 (D. Del. 2008), rev’d Boehringer Ingelheim
Intgern, gmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010). This action was consolidated
with an action these plaintiffs later brought against Mylan Laboratories (“Mylan) seeking to
enforce their rights in the Mirapex patents against Mylan. See [#1-4] at 4.
Marla S. Persky is Senior Vice President, General Counsel, and Secretary of Boehringer
Ingelheim USA Corporation, Boehringer Ingelheim Corporation and BIPI. She attempted to
settle the lawsuit pertaining to the Mirapex litigation, but the case proceeded to trial in the
District of Delaware, where the court held that the Mirapex patents were invalid. Boehringer
Ingelheim Inter. gmbH, 562 F. Supp. 2d at 640 (D. Del. 2008). Persky’s clients pursued appeal
in the Federal Circuit. Boehringer Ingelheim Intgern, gmbH., 592 F.3d at 1340. On January 25,
2010, the Federal Circuit reversed the lower court and remanded the case to the district court. Id.
In 2008, however, Barr and BIPI settled their disputes as to Aggrenox and Mirapex, and
submitted the settlement to the FTC and Department of Justice, as required by law. [#1-4] at 5.
The review of the settlement by the FTC led to the subpoena at issue here. The FTC opened a
formal investigation in January 2009 to determine whether, via the settlement, the two parties
had engaged in unfair methods of competition with respect to the sale of the two drugs and their
generic counterparts. Id. The agreement provided that Barr could begin to market its generic
versions only near the expiration of BIPI’s patent, and that Barr would help promote BIPI’s
2
product until it entered the market. Id. This arrangement prompted the concern of the FTC that
Barr agreed to delay marketing the generic versions of Aggrenox and Mirapex so as to allow
BIPI to reap the sole profits, and in exchange, BIPI would “kick back” a portion of those profits
to Barr. Id.
Shortly after the FTC investigation began, a subpoena was issued to BIPI, but BIPI did
not comply with the deadline for production. [#1-4] at 5-6. Pursuant to Sections 9 and 16 of the
Federal Trade Commission Act (“FTC Act”), 15 U.S.C. §§ 49, 56, 2 on October 23, 2009, the
FTC filed this petition seeking enforcement of the subpoena. [#1]. Specifically, the FTC
requested that the Court order BIPI to comply with the subpoena and turn over all relevant
documents concerning the litigation between BIPI and Barr; sales, profits, and marketing of the
brand-name drugs; the settlement agreement; co-marketing with Barr and other firms; the
marketing of the generic substitutes by Barr; and analyst reports on the drugs. Id. at 5. Between
December 2009 and May 2010, there were disputes regarding the scope and adequacy of BIPI’s
search efforts. In May 2010, however, BIPI formally certified that it had fully complied with the
FTC subpoena. See Status Memorandum Advising the Court of New Developments [#15] at 2.
The following month the FTC filed a status memorandum stating that BIPI’s “limited
custodial-based search did not locate all responsive materials.” Federal Trade Commission’s
Status Memorandum Advising the Court of New Developments [#17]. The FTC also objects to
BIPI’s withholding of roughly 25% of its produced documents under claims of work product and
attorney-client privilege. Id.
During a March 8, 2011 status conference, I directed the parties to meet and confer on a
sample set of documents to be presented to me for in camera review. I have reviewed BIPI’s
privilege log as well as the sampling of documents, which were created by BIPI in the period
2
All references to the United States Code are to the electronic versions in Westlaw and Lexis.
3
between the District Court decision on June 26, 2008 and the settlement achieved on August 11,
2008.
The sample was chosen as representative of the 631 documents BIPI claims are
privileged. The FTC, which has not seen the documents, insists that they are not protected,
either because: 1) they are typical business forecasts not done by lawyers, and therefore not work
product, or 2) the documents contain no confidential communications between client and
attorney and do not qualify as protected by the attorney-client privilege. Status Report of the
Federal Trade Commission [#41] at 1-2. Alternatively, the FTC argues that, even if the
documents are privileged, the privilege is overridden by the FTC’s substantial need for these
documents in order to conclude its law enforcement investigation. Id. at 3.
Finally, the FTC claims that BIPI’s eventual response to the subpoena was legally
inadequate. Id. at 12-14. The FTC alleges that BIPI failed to preserve its electronic records and,
as a result, responsive emails exist only on server back-up tapes, which BIPI refuses to search.
Id. As a result, the FTC claims BIPI “has not conducted sufficient electronic searches of certain
network folders, and instead relies on a custodian-based self-selection search process that the
evidence indicates did not uncover many responsive documents.” Id.
Therefore, two issues remain: 1) whether the documents claimed by BIPI to be protected
under a privilege are, in fact, privileged; and 2) whether the scope and adequacy of BIPI’s search
is sufficient. I will address the former issue in this Memorandum Opinion. The latter will be
addressed in a separate, forthcoming opinion.
4
II. LEGAL STANDARD
A. Application of the Federal Rules of Civil Procedure
Under the common law, on a petition to enforce an administrative subpoena, the court’s
role is limited to evaluating whether the subpoena is for a lawful purpose, whether the documents
requested are relevant to that purpose, and whether the demand is reasonable. See FTC v.
Texaco, Inc., 555 F.2d 862, 872 (D.C. Cir. 1997) (en banc) (citing Endicott Johnson v. Perkins,
317 U.S. 501, 509 (1943) and Oklahoma Press Pub. Co. v. Walling, 327 U.S. 186, 209 (1946))
(cert. denied, 431 U.S. 974 (1977)). When the subpoenaed party is not challenging enforcement
of the subpoena itself, but rather objecting to the disclosure of specific documents under a claim
of privilege, the principles of the attorney-client privilege and the protection of work product
privilege, derived from the common law and Rule 26(b)(3)(A) of the Federal Rules of Civil
Procedure, apply. See, e.g., U.S. v. Cal. Rural Legal Assistance, Inc., 824 F. Supp. 2d 31, 43-44
(D.D.C. 2011) (noting that enforcement of an administrative subpoena from a government
agency may be limited by the federal attorney-client and work product privileges, rather than
state privileges or ad hoc determinations). “The nature of a subpoena enforcement proceeding,
under common sense and precedents in this circuit and elsewhere, thus rests soundly in federal
law, and federal law of privilege governs any restrictions on the subpoena's scope.” Linde
Thomson Langworthy Kohn & Van Dyke, P.C. v. Resolution Trust Corp., 5 F.3d 1508, 1513
(D.C. Cir. 1993).
In general, the Federal Rules of Civil Procedure apply to “proceedings to compel . . . the
production of documents through a subpoena issued by a United States . . . agency under federal
statute.” Fed. R. Civ. P. 81(a)(5). The work product doctrine set forth in Rule 26 therefore
applies to a subpoena issued by a federal investigative agency prior to the contemplation of
5
actual litigation. That rule prevents against disclosure of “documents and tangible things
prepared in anticipation of litigation or for trial by another party or its representative.” Fed. R.
Civ. P. 26(b)(3)(A).
Accordingly, I will address the FTC’s claims and BIPI’s assertion of privilege under the
standards of Rule 26 and interpreting case law.
B. The Work Product Doctrine
“The work-product doctrine ‘provides a working attorney with a zone of privacy within
which to think, plan, weigh facts and evidence, candidly evaluate a client's case, and prepare
legal theories.” Linde, 5 F.3d at 1515, (citing Coastal States Gas Corp. v. Dep.’t of Energy, 617
F.2d 854, 864 (D.C. Cir. 1980)). It “undeniably extends to communications with ‘one employed
to assist the lawyer in the rendition of professional legal services.’” Id. at 1514 (internal
quotations omitted). The work product doctrine is therefore broader in scope than the attorney-
client privilege. Id. It protects against disclosure of not just communications, but also the
“mental impressions, conclusions, opinions, or legal theories of an attorney.” Id. See also Tax
Analysts v. Internal Revenue Serv.,117 F.3d 607, 619 (D.C. Cir. 1997).
As I have said previously, the Rule’s emphasis on documents prepared “in anticipation of
litigation” contains two separate, yet related concepts – one temporal, the other motivational.
Willingham v. Ashcroft, 228 F.R.D. 1, 4 (D.D.C. 2005). “In reviewing documents claimed to be
protected by the work-product privilege, the court must determine ‘whether, in light of the nature
of the document or the factual situation in a particular case, the document can fairly be said to
have been prepared or obtained because of the prospect of litigation.’” Banks v. Office of Senate
Sergeant-At-Arms, 228 F.R.D. 24, 26 (D.D.C. 2005) (quoting Equal Emp’t Opportunity
Comm’n v. Lutheran Soc. Servs., 186 F.3d 959, 968 (D.C. Cir. 1999) (emphasis added)). Put
6
another way, “[t]o be protected by the work-product doctrine, a document must have been
created for use at trial or because a lawyer or party reasonably anticipated that specific litigation
would occur and prepared the document to advance the party's interest in the successful
resolution of that litigation. Motivation is key.” Banks, 228 F.R.D. at 26 (internal citations
omitted). See also United States v. Deloitte, 610 F.3d 129, 137 (D.C. Cir. 2010) (“Like most
circuits, we apply the ‘because of’ test, asking ‘whether, in light of the nature of the document
and the factual situation in the particular case, the document can fairly be said to have been
prepared or obtained because of the prospect of litigation.’”) (internal citation omitted). Yet, if
the documents in question would have been created in essentially the same form, irrespective of
litigation, “it [cannot] fairly be said that they were created ‘because of’ actual or impending
litigation.” Willingham, 228 F.R.D. at 4 (citing United States v. Adlman, 134 F.3d 1194, 1202-
03 (2d Cir. 1998)).
If a party can show that the documents were developed because of ongoing litigation,
they are not discoverable absent the requesting party’s showing that their need for the documents
is substantial and that they are unable to obtain the substantial equivalent of the materials by
other means without suffering “undue hardship.” Dir., Office of Thrift Supervision v. Vinson &
Elkins, LLP, 124 F.3d 1304, 1307 (D.C. Cir. 1997). Even when the requesting party can meet
this burden, only “factual” work product will be disclosed; “opinion” work product, which
reveals the mental processes or impressions of an attorney or his or her agents, will still receive
the utmost protection. Upjohn Co. v. United States, 449 U.S. 383, 400 (1981); Dir., Office of
Thrift Supervision, 124 F.3d at 1307 (“Opinion work product . . . is virtually undiscoverable.”);
Nesse v. Pittman, 202 F.R.D. 344, 350 (D.D.C. 2001) (“[E]ven if the work-product privilege
yields to a showing of need, the court must still protect absolutely the “mental impressions,
7
conclusions, opinions or legal theories of an attorney.”). Where the factual and opinion work
product are so intertwined in a document that it is impossible to segregate and disclose the purely
factual part, any disclosure would violate the protections afforded by the work product doctrine
since, in that case, the entire document discloses the mental impression of an attorney or her
agent. In re Vitamins Antitrust Litig., 211 F.R.D. 1, 5 (D.D.C. 2002) (holding that if the court
were to find “that the attorney’s mental impressions are so thoroughly intertwined with factual
information that the entire memoranda should be treated as work product, the [materials] cannot
be produced.”).
C. Attorney-Client Privilege
In this Circuit, the attorney-client privilege applies only to communications from a client
to an attorney made in confidence for the purpose of securing legal advice. Jinks-Umstead v.
England, 231 F.R.D. 13, 15 (D.D.C. 2005); Athridge v. Aetna Cas. & Sur. Co., 184 F.R.D. 200,
204 (D.D.C. 1998); Evans v. Atwood, 177 F.R.D. 1, 3 (D.D.C. 1997) (citing Tax Analysts, 117
F.3d at 617). The privilege also extends “to communications from attorneys to their clients if the
communications rest on confidential information obtained from the client.” Tax Analysts, 117
F.3d at 618 (internal quotations omitted). This includes communications made by employees of
a client in response to the client’s attorney’s request for information for the purposes of
rendering legal services to the client. Banks v. Office of Senate Sergeant-at-Arms, 222 F.R.D. 1,
3 (D.D.C. 2004). The attorney-client privilege and the work product doctrine often go hand-in-
hand: “Because the work-product and attorney-client privileges operate independently of each
other, the application of either will act to shield from production those documents for which both
privileges are claimed.” Nesse, 202 F.R.D. at 348. Documents that are protected by the attorney-
client privilege are thus absolutely privileged as is opinion work product. Factual work product
8
yields, however, to a showing of substantial need and the inability to secure the materials by
other means without undue hardship.
III. ANALYSIS
The FTC takes issue with several categories of documents for which BIPI asserted claims
of privilege: 1) the financial analyses of a co-promotion agreement regarding Aggrenox; 2)
forecasting analyses of possible time lines for the generic drug to enter the market; 3) financial
analyses of the business terms of the settlement agreement; and 4) notes taken by business
executives. [#41] at 3. The FTC claims an overriding and compelling need for disclosure of
these categories. Id. It also insists that attorney-client privilege claims regarding business
documents that had no attorney as an author or recipient, or included an attorney only as part of a
distribution to business executives, must be rejected. Id.
Having reviewed the documents in camera, I will now address the merits of BIPI’s
claims of privilege. I have sorted the different documents into four broad categories, and will
address each in turn.
A. Analyses of Co-Promotion Agreement, Forecasting Analyses, and Financial
Analyses Used to Evaluate Potential Settlement Options
Many of the documents for which BIPI claims a work product privilege are described in
the privilege log using the labels in the title of this sub-section. BIPI claims that these analyses
were prepared not in the ordinary course of business, but for the specific purpose of informing
counsel whether the proposed BIPI-Barr settlement offers should be accepted. Tr. of Status
Hearing of 12/9/11 [#59] at 20. BIPI concedes that financial projections and analyses are
frequently conducted, even absent ongoing or contemplated litigation, but contends that the
specific financial analyses at issue before the Court do not fall into this category. Id. at 22.
9
Rather, says BIPI, they were specially prepared at the request of counsel in response to litigation,
and are therefore work product. Id.
Indeed, BIPI contends that it already turned over more than 270,000 pages of documents,
including projections and financial analyses that were prepared in the ordinary course of
business. [#59] at 22; 27-28. Attorneys for BIPI further argue that, even though the analyses in
question were prepared by non-lawyers, the documents are still protected by attorney-client
privilege or the work product doctrine because the analyses were premised on frameworks
provided by Persky and were prepared for her use. Id. at 27-28. BIPI therefore requests that I
hold each of the documents provided for in camera review to be privileged, and thus, not subject
to disclosure. See Response of Boehringer Ingelheim Pharmaceuticals, Inc. to the Federal trade
Commission’s Status Report [#44] at 2.
With regards to the analyses specific to the Aggrenox co-promotion agreement, the FTC
claims that agreement was “distinct from the settlement agreement,” [#41] at 4, meaning it was
not prepared for the BIPI-Barr litigation, and therefore cannot qualify for work product
protection because the co-promotion was not even a part of the litigation. BIPI, on the other
hand, claims that, while the co-promotion agreement was “freestanding,” in that it constituted a
separate business arrangement, the terms of the co-promotion agreement were indeed part of the
litigation settlement and the two processes informed one another. [#44] at 4. BIPI asserts that the
co-promotion agreement arose during the settlement discussions and, in fact, was part of the
settlement. Id.
After reviewing these documents, the status reports and oppositions, and affidavits
accompanying the in camera submissions, I agree that the co-promotion agreement was an
integral part of the litigation. Hence, disclosure of the attorneys’ and their agents’ mental
10
processes qualify for protection since the process of deciding whether to settle a case is
necessarily created because of the prospect of litigation. I credit the declarations of Persky and
Pamela M. Taylor, partner at Jones Day, the firm representing BIPI in the FTC investigation, that
the various financial analyses were prepared for the client during settlement discussions and
involved discussions among the attorneys and their agents who were handling the settlement
negotiations. The documents themselves establish the truth of Persky’s claims in her affidavit
that the documents were created by BIPI or Boehringer Ingelheim employees in response to her
personal requests for financial and other information. This was information she needed in order
to provide her client, BIPI, with legal advice regarding the potential settlement between BIPI and
Barr. Information used to assess settlement option clearly falls within the ambit of the work
product doctrine. See Willingham, 228 F.R.D. at 4. Consequently, these documents are work
product and thus protected.
Although the FTC is correct in its assertion that similar reports are prepared for BIPI
executives as a matter of regular business, the specific reports as to which BIPI claims the
privilege were prepared using information and frameworks provided by BIPI attorneys, and
constitute work product intended to aid these attorneys in the settlement process. Moreover,
BIPI insists any freestanding non-litigation-based financial analyses were already disclosed to
the FTC, meaning that the only additional information the documents at issue would yield is the
mental thought processes of BIPI’s attorneys as they prepared for settlement negotiations.
Having reviewed the documents themselves, I find that BIPI is correct—these documents were
prepared for counsel and were not business forecasts made in the ordinary course of business.
11
B. The FTC’s Overriding and Compelling Need for the Analyses
In the event that I found, as I just have, the various financial analyses to be work product,
the FTC argues that the documents must be disclosed due to its overriding and compelling need
for them to complete the administrative investigation. [#41] at 9-11. The documents, according
to the FTC, and the documents cannot be obtained in any other way. Id. at 10. The FTC believes
these materials are vital to the FTC’s investigation, and objects to BIPI’s use of them as both a
sword (to claim their business deal was a fair transaction) and a shield (using claims of privilege
to prevent anyone from looking into the validity of such a claim). Id. at 9-10.
I hold that this argument fails on two accounts. First, as described above, a showing of
substantial need is not sufficient to merit disclosure of opinion work product. Having reviewed
the documents, I find that the factual inputs cannot be reasonably segregated from the analytical
outputs. Hence, a disclosure of any aspect of the financial analyses would necessarily reveal the
attorneys’ thought processes regarding the BIPI-Barr settlement. The reports in question were
prepared at the behest of BIPI attorneys, who requested that certain data be entered and
manipulated to determine whether various settlement options were beneficial to BIPI. Revealing
the data chosen for this analysis would necessarily reveal the attorneys’ mental impressions,
including, at a bare minimum, that the attorneys believed such analyses of that data was
necessary or important to determining an appropriate settlement. Where the factual work
product cannot reasonably be excised from the opinion work product, the claim of privilege must
be upheld and the request for production denied.
Second, after reviewing these documents in camera, I cannot agree that there is an
overriding need on the side of the FTC. From my review, there are no smoking guns contained
in these documents; rather, they are the sort of financial analyses one would expect a company
12
exercising due diligence to prepare when contemplating settlement options. They yield nothing
more than the arithmetical calculations of various potential scenarios and are not in any way
evidence of any conspiratorial intent to violate the law. They also do not cast any light on the
fundamental legal issue of whether the deal was or was not anti-competitive in intendment or
result. No one is pretending that the FTC is not fully aware of the deal that was made or of the
economic benefits the deal makers were trying to achieve. The arithmetic of various potential
scenarios adds nothing to what is already known about what the involved companies intended in
settling their suit. Although I am sympathetic to the FTC’s argument that these financial
analyses are the only documents that could demonstrate whether or not BIPI was using the co-
promotion agreement to pay Barr not to compete, I am afraid that they cast no light of whether
that intendment existed. I therefore cannot find that the FTC has shown the requisite need for
this work product that is generally considered to be “virtually undiscoverable.” Dir., Office of
Thrift Supervision, 124 F.3d at1307.
The privilege log should be sufficient to convey to the FTC the contents of the e-mails
transmitting the above-mentioned reports, and no further disclosure should be necessary. For the
purposes of ruling on the in camera submission, I have grouped these transmittal e-mails
together under Category D in the attached Appendix. If the e-mails contain additional, factual
work product that can be reasonably excised from any indication of opinion work product, as
discussed above, the e-mail may be redacted as to the latter and disclosed, if BIPI has not done
so already. If no segregation is possible, the transmittal e-mails will fall under the same privilege
that applies to the documents themselves, which are grouped in the Appendix under Category A.
C. E-mails, Notes, and Correspondence Regarding Strategic Decisions, Settlement
Possibilities, and Settlement Options, Including Correspondence Between
Executives
13
Like the above-mentioned categories of documents, the documents under this heading
represent various types of communications (including e-mails, handwritten notes, and other
correspondence) all discussing the different settlement possibilities or specific options that were
on the table for BIPI. Again, I hold that they, too, are protected by the work product doctrine
and are not subject to disclosure insofar as these documents contain the mental processes and
opinions of BIPI attorneys and their consultants.
Some of these documents include correspondence and other materials circulated
principally between executives, rather than between attorneys and executives, for which BIPI has
claimed an attorney-client privilege. To this, the FTC objects that the attorney-client privilege or
work product doctrine cannot exist between non-attorneys. Federal Trade Commission’s Reply
Status Report [#47] at 5. BIPI claims that these documents were either prepared during
discussions with counsel or as part of the work performed at counsel’s request. [#44] at 8. It also
claims that 1) at least 76 of the 102 documents involving non-lawyers explicitly state that they
are confidential or prepared at the direction of counsel, and 2) that an additional 64 are directed
to an attorney, admittedly among other recipients, and include requests for legal advice. Id. at 11-
12. The documents themselves indicate, however, that they were intended to be confidential
communication between the client, BIPI, and its attorneys. They are thereby protected by the
work product and attorney-client privileges because they disclosed confidential communications
between attorney and client and were prepared during the settlement phase of the litigation. The
documents submitted for in camera review deserving of this protection are listed in Category B
in the Appendix.
14
D. E-mails Reflecting Requests for Legal Advice or Conveying Requests From
Attorneys for Information To Be Used in Settlement Negotiations
A third category of documents encapsulated by the heading above poses a different issue
– the attorney-client privilege on its own.
An example of the FTC’s issue with this category of documents is document #724. BIPI
asserts attorney-client privilege over this document because it reflects a request by in-house
counsel, Bruce Banks, for information that would help inform BIPI in drafting its co-promotion
agreement with Barr. Declaration of Pamela L. Taylor, submitted in camera, at 39. The FTC
takes issue with this on the grounds that the communication was between two non-lawyers, and
thus cannot be considered protected by the attorney client privilege. However, communications
among employees of a client are still afforded the protection of the privilege, so long as the
communications concern legal advice sought or received that was intended to be confidential.
See, e.g., Long v. Anderson Univ., 204 F.R.D. 129 (S.D. Ind. 2001) (e-mails between one
university employee and another regarding communications with counsel were privileged);
Johnson v. Sea-Land Serv. Inc., No. 99-civ-9161, 2001 WL 897185, at *2 (S.D.N.Y. Aug. 9,
2011) (holding that the privilege “affords confidentiality to communications among clients, their
attorneys, and the agents of both, for the purpose of seeking and rendering an opinion on law or
legal services, or assisting in some legal proceeding, so long as the communications were
intended to be, and were in fact, kept confidential.”).
I therefore hold that all e-mails conveying a request for or the provision of legal advice
are protected by the attorney-client privilege. Out of the documents submitted for in camera
review, this would include document #1599, which was already provided in redacted form with
the privileged material excised; and document #724, described above.
15
Some documents contain an entire string of e-mails being sent back and forth, in which
the correspondence addresses legal strategies, proffers of advice, or potential avenues for the
settlement. Document #2190 is such a chain, and as such, it is privileged in its entirety.
However, in instances where there are multiple e-mails in a single string, and only one of those
e-mails contains privileged material, the privileged component may be excised but the remainder
of the e-mail string must be disclosed. I hope that the parties will find this consistent with my
treatment of the transmittal e-mails described in section II.A, supra. For example, document
#1318 contains multiple e-mails back and forth among several groups of people, with only the
final e-mail indicating a request for legal advice. In instances such as this, only the specific e-
mail that is privileged may be withheld or redacted; the rest must be disclosed.
Finally, there was one e-mail chain where it was unclear on its face whether BIPI’s
attorneys’ advice was sought on a confidential issue. Document #2896 is an e-mail string
concerning BIPI’s media response about the approval by the FDA of the Barr generic.
Declaration of Pamela L. Taylor, submitted in camera, at 36. In the last e-mail, Paula
Wittmayer, an attorney with BIPI’s in-house counsel, simply says: “Here were my edits to the
last version.” It is impossible to tell from the e-mail chain whether her views were sought as to a
legal issue, or whether her edits were merely typographical and grammatical. One cannot say,
therefore, that her client sought legal advice by a confidential communication. Therefore, the
claim of privilege fails as to this e-mail chain and others where confidential communication is
not intended.
There is also a set of documents provided for my review that are duplicates or near
duplicates of other documents already provided. These documents are listed in category E in the
Appendix, and should be handled in the same manner as the documents they duplicate.
16
I appreciate that there may be documents at issue in this case which may not fit neatly
into one of the categories described above. As the FTC noted in its recent request for a status
conference on this issue, the debate about these documents has gone on for too long. I hope to
avoid a protracted and unnecessary back-and-forth as to each of the 600-plus documents still in
question. We shall proceed as follows. BIPI should make a rolling production of non-privileged
documents at no less than 100 documents a day until the production is completed. BIPI must
disclose, in redacted form, all correspondence containing factual, rather than opinion, work
product, if it has not already done so. However, all financial analyses prepared for the BIPI-Barr
litigation, including for the Aggronex co-promotion agreement, are deemed privileged, as
discussed above, and not subject to disclosure.
I will hold counsel for BIPI strictly to the obligation imposed by Rule 26(g) of the
Federal Rules of Civil Procedure and expect the redactions it makes to be not a word more than
is necessary to protect a privilege. If that is not done, I will sanction BIPI counsel and, at a
minimum, BIPI will forfeit its privilege to that document. If I detect a pattern of a failure to
comply with the obligations I am imposing, I will consider forfeiting the privilege as to all
remaining documents.
I hope by doing this to provide the FTC with the gist of the document despite the
redaction being made so that it can conscientiously and reasonably decide whether any additional
battle over the document is truly necessary. Demanding a document that, even as redacted, is
innocuous and does not really advance its investigation may lead to similar consequences for the
FTC, and, again, if a pattern emerges, I will consider upholding the privilege as to all remaining
documents. I ask only that the parties be reasonable and devote only that amount of time to this
controversy that is truly proportionate to what is now at stake.
17
If all else fails, BIPI will submit the disputed documents to me for in camera review and I
will resolve them summarily and as quickly as I can.
My ruling as to the specific documents submitted for in camera review is set forth in the
attached Appendix.
An Order accompanies this Memorandum Opinion.
Digitally signed by John M. Facciola
DN: c=US, st=DC, l=Washington,
email=john_m._facciola@dcd.usco
urts.gov, o=United States District
Court for the District of Columbia,
cn=John M. Facciola
Date: 2012.09.27 09:12:34 -04'00'
___________________________________
JOHN M. FACCIOLA
UNITED STATES MAGISTRATE JUDGE
18
APPENDIX A
Documents submitted for in camera review
CATEGORY DOCUMENTS RULING
A) Presentations and 3328 928 1947 These documents are
documents regarding 1365 1291 233 protected by the work
overview of 1366 1580 790 3 product and/or
litigation, options 1367 1984 791 attorney client
available, and/or 1368 617 2333 privilege, and are not
estimated financial 2921 2250 2387 subject to disclosure.
impact of various 1396 1040/1041 1057/1058
options for 1397 1381 1004
settlement; financial 1344 2364 992
analyses of both the 900/901/902 810/811 2495
co-promote 2364 832/833 2946
agreement and 2918/2919 973 2550
various settlement 2920/2921 1290 2578/2580
options; summaries 2983/2984
of settlement 3058
discussions
B) E-mails, notes, and 780/781 927/928 821 These documents are
reports containing: 621 1516 4 1947 protected by the work
• strategic decisions 574/575/576 2547 1093 product and/or
• proposed 729 2540 3415 5 attorney client
settlement options 1007/1008 859 1001 privilege, and are not
and terms 891 subject to disclosure.
• delegation of 1016/1017
responsibilities
• analysis from
executives,
prepared for
counsel,
conveying mental
impressions of
counsel or strategy
for litigation
3
A redacted version of this document was already produced.
4
It appears from the face of this document that it is notes taken during a conversation with an
attorney. If that is the case, and these notes reflect the contents of that conversation, the notes
would be privileged. As it is difficult to determine definitively whether or not this is the case,
with regards to this document, I instruct BIPI to supplement the privilege log to indicate where
and in what context these notes were taken.
5
The report attached to this e-mail exchange was already produced. The e-mail itself is
privileged and does not need to be disclosed.
19
C) Requests for legal 1599 2190 2896 6 Any emails related to
advice or e-mails 1318 724 requests for or the
containing legal provision of legal
advice or opinions advice need not be
produced and may be
redacted if part of a
larger e-mail chain
(e.g., 1318). Chains
not containing any
confidential
communications
between attorneys for
BIPI and BIPI
employees must be
disclosed in full.
D) E-mails transmitting 3327 1395 1868 BIPI should redact
privileged 1364 616 699 opinion work
documents, where 2917 1039 1000 product, if any, from
the e-mail itself 3057 1308 2945 these e-mails and
contains no little or 1343 disclose the rest to
privileged material the FTC.
E) Near duplicates of 1955, duplicating 576/1041 Disclosure of these
documents falling 908, duplicating 617 near-duplicates
into the above 1415 and 693, duplicating 859 should mirror my
categories, for which 861duplicating 833 holdings on the
the FTC requested in 860, 844, and 1996 duplicating 832 original documents.
camera review 1341, 815, 819, 1333, and 858 duplicating
2580
6
This exchange was already produced with virtually all the content redacted. As discussed in
this Memorandum Opinion, however, the contents of the e-mail do not indicate whether or not
the material is protected by the attorney-client privilege, as claimed. It must therefore be
disclosed in full.
20