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AbbVie Inc. v. Boehringer Ingelheim International GMBH

United States District Court, D. Delaware

June 14, 2018

ABBVIE INC. and ABBVIE BIOTECHNOLOGY LTD
v.
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

         Defendants (collectively “Boehringer”) have moved to compel plaintiffs (collectively, “AbbVie”) to produce an unredacted version of a slide presentation.[1] 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).

         I. The Nature of the Dispute.

         During 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).

         Boehringer 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)).

         AbbVie 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.[2] Doc. No. 108.

         II. Discussion

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 can be

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, ¶ 503(a)(1)(01).

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 omitted).

         I will 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 otherwise.

         #2 IP strategy development.

         This 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 ...


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