United States District Court, D. Delaware
ABBVIE INC. and ABBVIE BIOTECHNOLOGY LTD
BOEHRINGER INGELHEIM INTERNATIONAL GMBH, BOEHRINGER INGELHEIM PHARMACEUTICALS, INC., and BOEHRINGER INGELHEIM FREMONT, INC.
MEMORANDUM AND ORDER CONCERNING DOC. NO. 73
RICHARD A. LLORET U.S. MAGISTRATE JUDGE
(collectively “Boehringer”) have moved to compel
plaintiffs (collectively, “AbbVie”) to produce an
unredacted version of a slide presentation. Boehringer's
Motion (BI Mot.) at 1-2 (Doc. No. 73). AbbVie has responded
(Doc. No. 107) (AV Res.), and Boehringer has replied to the
response (Doc. No. 117) (BI Rep.). I permitted AbbVie to file
a sur-reply (Doc. No. 123).
The Nature of the Dispute.
discovery, AbbVie produced an unredacted version of a slide
presentation, titled “Humira IP Discussion, ”
dated January 25, 2011. BI Mot. at 2 (referencing Bates
number ABV-BI00658329-658347). The slide presentation
discussed intellectual property strategies for AbbVie's
drug, Humira, in the face of business threats posed by
biosimilar drugs. Id. In a letter dated May 4, 2018,
AbbVie sought to claw back the unredacted version, after
Boehringer quoted from it in Boehringer's May 3, 2018
interrogatory responses. Id. AbbVie contends that
the unredacted version was produced inadvertently: although
the “original document had contained an
‘Attorney-Client Communication/Privileged and
Confidential' legend (as well as a page number) on each
page, this text was missing from the production
version.” AV Rep. at 2. Under the protective order
previously entered in this case, AbbVie asked that Boehringer
refrain from “reviewing and referencing the contents of
the Humira IP Deck until AbbVie produced a redacted version
of the document.” Id. at 3. On May 10, 2018
(BI Mot. at 3), AbbVie produced a redacted version of the
Humira IP Discussion that removed references to
“AbbVie's intellectual property strategy for
Humira, including breadth and strength of potential patent
claims and claim types as well as patentability of such
claims.” AV Res. at 2 (referring to ABV-BI00658336). On
May 14, 2018 AbbVie produced a privilege log for the redacted
Humira IP Discussion. Id. at 4 (referring to Exhibit
F, transmittal email and privilege log).
claims the redacted slides are not subject to the
attorney-client privilege because “[t]here is no
indication that the Humira Presentation was made between
privileged persons in confidence for the purpose of obtaining
or providing legal assistance for AbbVie.” BI Mot. at
5. Instead, the slides relate to “AbbVie's business
strategies” and discuss the “status of programs
that AbbVie already launched within the company on a large
scale to generate more patent filings.” Id.
Boehringer argues that evaluations of the “competitive
position of the company reflects predominately business
concerns” that are not subject to attorney client
privilege. Id. (internal quotations omitted)
(quoting from Hercules, Inc. v. Exxon Corp., 434
F.Supp. 136, 147 (D.C.Del. 1977)).
submitted the unredacted Humira IP Discussion slides for my
review. Letter of June 11, 2018. AbbVie also submitted two
affidavits under seal, one from Perry Siatis, Esq., an
in-house attorney who attended the meeting at which the slide
show was presented (Doc. No. 109), and Michael Schwartz,
Esq., who examined the original slide show and determined
that the footer “Attorney-Client
Communication/Privileged and Confidential” was
contained in the original. Doc. No. 108.
The attorney-client privilege protects against discovery
of: “(1) a communication (2) made between privileged
persons (3) in confidence (4) for the purpose of obtaining
or providing legal assistance for the client.”
See In re Teleglobe Commc'ns Corp., 493 F.3d
345, 359 (3d Cir. 2007).
Federal Trade Commission v. Abbvie Inc., 2016 WL
4478803, at *2 (E.D.Pa. 2016); see Idenix
Pharmaceuticals, Inc. v. Gilead Sciences, Inc., 195
F.Supp.3d 639, 642 (D.Del. 2016). AbbVie, as the party
asserting the privilege, bears the burden of proving that the
privilege applies. Id. (citing to Matter of
Bevill, Bresler & Schulman Asset Mgmt. Corp., 805
F.2d 120, 126 (3d Cir. 1986)). Corporate counsel often
operates in both a business and legal capacity. “When
the communication between an attorney and non-legal personnel
primarily relates to business concerns, the communication is
not within the scope of attorney-client privilege.”
Immersion Corporation v. HTC Corporation, 2014 WL
3948021, at *1 (D.Del. 2014). Application of this distinction
difficult, since in the corporate community, legal advice
“is often intimately intertwined with and difficult to
distinguish from business advice.” Sedco
International, S.A. v. Cory, 683 F.2d 1201, 1205 (8th
Cir.) . . . Therefore, the court's inquiry is focused on
whether “the communication is designed to meet problems
which can fairly be characterized as predominately
legal.” Cuno, 121 F.R.D. at 204, citing, 2 J.
Weinstein & M. Berger, Weinstein's Evidence,
Leonen v. Johns-Manville, 135 F.R.D. 94, 98-99
(D.N.J. 1990) (citations omitted). The mix of business and
legal concerns in the Humira IP Discussion is obvious.
AbbVie's burden is to demonstrate that the communications
in the Humira IP Discussion are directed to issues which are
primarily or predominately legal in nature. Id.; see
Idenix, 195 F.Supp.3d at 642. Another way of putting the
test is that the privilege does not apply unless “the
communication would not have been made but for the
client's need for legal advice or services.”
Louisiana Mun. Police Employees Retirement System v.
Sealed Air Corp., 253 F.R.D. 300, 306 (D.N.J. 2008)
(internal quotation omitted). This rule is consistent with
the Supreme Court's instruction that “[e]videntiary
privileges must be strictly construed, because they
‘contravene the fundamental principle that the public
has a right to every man's evidence.'”
University of Pennsylvania v. E.E.O.C., 493 U.S.
182, 189 (1990) (internal quotations, ellipses and citations
analyze the proposed redactions to determine if AbbVie has
met its burden. The redacted slides are identified by page
number and a general description of the subject matter.
AbbVie proposes to redact the whole slide unless noted
IP strategy development.
slide contains a pie chart supplying an overview of the
various features of AbbVie's “IP Strategy
Development Activity.” The activity described consists
of some ...