Elan Microelectronics Corporation v. Apple, Inc.

Filing 306

Declaration of Derek C. Walter in Support of Apple's Reply to Elan's Opposition to Motion to Compel filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K)(Mehta, Sonal) (Filed on 6/21/2011)

Exhibit K

Page 1

DEPOMED, INC., Plaintiff(s), v. IVAX CORPORATION, ET AL., Defendant(s).
No. C-06-0100 CRB (JCS),[Docket Nos. 103/105]
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA
2007 U.S. Dist. LEXIS 97835

June 19, 2007, Decided
June 19, 2007, Filed
COUNSEL: [*1] For Depomed, Inc., Plaintiff: Christine
Saunders Haskett, Michael Kenneth Plimack, LEAD
ATTORNEYS, Covington & Burling LLP, San
Francisco, CA; Elena Maria DiMuzio, M. Patricia
Thayer, Nathan E. Shafroth, Heller Ehrman LLP, San
Francisco, CA.
For Ivax Corporation, a Florida corporation, Ivax
Pharmaceuticals, Inc., a Florida corporation, Defendants:
Forrest Arthur Hainline, LEAD ATTORNEY, Susanne
N. Geraghty, Goodwin Procter LLP, San Francisco, CA;
E.
Jeffrey
Banchero,
Scott
Robert
Raber,
Kastner/Banchero LLP, San Francisco, CA; Jackie LaRae
Toney, Jeffrey James Toney, John Lincoln North, Julie
Ann Tennyson, Kristin Elizabeth Goran, Leslie K.
Slavich, William Franklin Long, III, Sutherland Asbill &
Brennan LLP, Atlanta, GA.
For Ivax Corporation, a Florida corporation, Ivax
Pharmaceuticals,
Inc.,
a
Florida
corporation,
Counter-claimants: Forrest Arthur Hainline, Goodwin
Procter LLP, San Francisco, CA.
For Depomed, Inc., Counter-defendant: Michael Kenneth
Plimack, LEAD ATTORNEY, Christine Saunders
Haskett, Covington & Burling LLP, San Francisco, CA;
Elena Maria DiMuzio, M. Patricia Thayer, Nathan E.
Shafroth, Heller Ehrman LLP, San Francisco, CA.
JUDGES: JOSEPH C. SPERO, United States Magistrate
Judge.

OPINION BY: JOSEPH [*2] C. SPERO
OPINION
ORDER RE IN CAMERA REVIEW RELATING TO
MOTION TO COMPEL
The Court received a joint letter dated May 23, 2007,
in which Defendant seeks to compel the Plaintiff to
produce copies of a memorandum denominated the
"Heines Memo" (the "Motion to Compel") [Docket Nos.
103/105]. The Court has reviewed the Heines Memo in
camera, as well as a cover memo from John W. Shell to
Dr. Peter Timmins at Bristol-Myers Squibb ("BMS")
dated April 16, 1997 (the "Cover Memo") that
accompanied the delivery of the Heines Memo to BMS.
Plaintiff transmitted the Heines Memo to BMS.
Defendant asserts that this waived the attorney-client
privilege for the Heines Memo and related documents.
Plaintiff argues that there was no such waiver because of
the existence of a common-interest privilege in this case.
See, e.g., Hewlett-Packard Co. v. Bausch & Lomb Inc.,
115 F.R.D. 308, 310-12 (N.D. Cal. 1987). In order to
show a common-interest privilege, Plaintiff must
demonstrate a common goal and that the documents or
communications in question further that common interest.
See U.S. v. Bergonzi, 216 F.R.D. 487, 496 (N.D. Cal.
2003).

Page 2
2007 U.S. Dist. LEXIS 97835, *2

Here, Plaintiff and BMS entered into a joint development
agreement dated July 11, 1996. [*3] This joint
development interest clearly created common goals. The
only question that remains is whether the communication
of the Heines Memo was in furtherance of those goals.
Having reviewed the Cover Memo and the Heines Memo
in camera, the Court finds that the Heines Memo was
communicated to BMS to further the parties' common
interest. Accordingly, there was no waiver of the
attorney-client privilege by communication of the Heines
Memo to BMS by Plaintiff. 1 For all of the foregoing
reasons, the Motion to Compel is DENIED.
1 Nor was there any waiver due to production of
these documents in discovery, either in this case
or in any other case. In a previous case, Plaintiff

produced the documents in question to BMS -who had every right to review them without
waiver under the common-interest privilege. In
the instant case, the parties have specifically
agreed that the inadvertent production of
privileged documents will not constitute a waiver.
IT IS SO ORDERED.
Dated: June 19, 2007
/s/ Joseph C. Spero
JOSEPH C. SPERO
United States Magistrate Judge