Shionogi & Co., Ltd. v. InterMune, Inc.

Filing 41

ORDER re 39 Letter filed by Shionogi & Co., Ltd.. Signed by Judge Elizabeth D. Laporte on December 5, 2012. (edllc2, COURT STAFF) (Filed on 12/6/2012)

1
2
3
4
5

IN THE UNITED STATES DISTRICT COURT

6

FOR THE NORTHERN DISTRICT OF CALIFORNIA

7
8

SHIONOGI & CO LTD,
Plaintiff,

9
United States District Court
For the Northern District of California

10
11
12

No. C -12-03495 EDL
ORDER REGARDING PARTIES’
NOVEMBER 28, 2012 LETTER

v.
INTERMUNE INC,
Defendant.

/

13
14

At the November 13, 2012 Case Management Conference, the Court authorized the parties to

15

file a joint letter regarding production of English translations of Japanese documents. In that letter

16

filed on November 28, 2012, Plaintiff contends that translations created at the direction of counsel

17

and in furtherance of preparing Plaintiff’s case are protected from disclosure by the attorney work

18

product doctrine. Defendant contends that Plaintiff should produce translations that it has in its

19

possession at the time of production, including translations prepared at the direction of counsel

20

during discovery.

21

The work product doctrine is “a qualified immunity protecting from discovery documents

22

and tangible things prepared by a party or his representative in anticipation of litigation.” Admiral

23

Ins. Co. v. United States District Court, 881 F.2d 1486, 1494 (9th Cir.1989). To qualify for work

24

product protection, documents must have two characteristics: “(1) they must be prepared in

25

anticipation of litigation or for trial, and (2) they must be prepared by or for another party [to the

26

litigation] or by or for that other party's representative.” In re Cal. Pub. Utils. Comm'n, 892 F.2d

27

778, 780–81 (9th Cir.1989); Fed.R.Civ.P. 26(b)(3).

28

Rule 26(b)(3) states that, upon a showing of substantial need and undue hardship by the
requesting party, a court may order discovery of work product, but “must protect against disclosure

1

of the mental impressions, conclusions, opinions, or legal theories of a party's attorney ...” Rule

2

26(b)(3) (A)-(B). Attorneys' mental impressions, conclusions, opinions, and legal theories are most

3

commonly referred to as “opinion” work product (as opposed to “ordinary” work product) and are

4

afforded heightened protection. See Holmgren v. State Farm Mut. Auto. Ins. Co., 976 F.2d 573, 577

5

(9th Cir.1991) (requiring a “compelling need” to discover opinion work product, but not extending

6

absolute protection).

7

The Court has reviewed the parties’ letter and concludes that it need not reach the question

8

of whether translations created at the direction of counsel in this case are opinion work product

9

because, at a minimum, the translations are ordinary work product. The translations constitute work

United States District Court
For the Northern District of California

10

product because they would reveal the results of a culling process with multiple levels; first,

11

bilingual attorneys from the United States would review millions of pages of documents in Japanese,

12

then bilingual attorneys from the United States, including bilingual lawyers from Plaintiff’s law

13

firm, would conduct a quality control of a sample of documents and of all documents categorized by

14

the first level reviewers as “hot,” and then Plaintiff’s litigation team would review analyses of the

15

“hot” documents prepared by the second level reviewers and would make a decision about whether

16

to translate the document. See, e.g., Plant Genetic Sys. v. Northrup King Co., 174 F.R.D. 330, 332

17

(D. Del. 1997) (“The Court is convinced that document selection by PGS rose to the level protected

18

by Sporck [v. Peil, 759 F.2d 312, 316 (3rd Cir. 1985)] only at the point where documents were

19

selected for longer or full translation because it is these documents that counsel for PGS considers

20

important enough to be translated into English for the benefit of the Court or a jury.”).

21

Further, Plaintiff states that only a few documents have been translated in the ordinary

22

course of business (as opposed to for use in this litigation) because Plaintiff’s business is conducted

23

in Japanese. Thus, virtually all translations made at this point would be for purposes of litigation

24

after a multiple-step selection process, and production of the subset of documents selected for

25

translation would reveal which documents Plaintiff’s attorneys selected as most important to the

26

litigation.

27
28

Ordinary work product is discoverable only upon a showing of substantial need and undue
hardship. See Fed. R. Civ. P. 26(b)(3) (“Ordinarily, a party may not discover documents and
2

1

tangible things that are prepared in anticipation of litigation or for trial by or for another party or its

2

representative. . . . But, subject to Rule 26(b)(4), those materials may be discovered if: . . . (i) they

3

are otherwise discoverable under Rule 26(b)(1); and (ii) the party shows that it has substantial need

4

for the materials to prepare its case and cannot, without undue hardship, obtain their substantial

5

equivalent by other means.”). Here, Defendant has not shown a substantial need or undue hardship.

6

Defendant focuses on the cost of translations, but such costs do not ordinarily constitute an undue

7

hardship and Defendant has not established that translations will here. Moreover, Defendant has not

8

shown a substantial need to piggyback on Plaintiff’s translations because it can obtain its own.
In addition, unlike In re Air Crash Disaster near Warsaw, Poland on May 9, 1987, 1996

10
United States District Court
For the Northern District of California

9

WL 684434, at *2 (E.D. N.Y. Nov. 19, 1996) on which Defendant relies, here, there has been no

11

offer to share translation costs or to waive challenges as to the accuracy of a translation. Nor has

12

there been a showing that upholding the work product protection of the translations would unduly

13

delay the discovery process, a concern of the Air Crash court.

14
15

IT IS SO ORDERED.
Dated: December 5, 2012
ELIZABETH D. LAPORTE
United States Magistrate Judge

16
17
18
19
20
21
22
23
24
25
26
27
28
3