Shelbyzyme LLC v. Genzyme Corporation

Filing 248

MEMORANDUM AND ORDER: The Court denies Genzyme's request that withheld documents concerning the abandonment of the '491 application be produced. Pursuant to 28 U.S.C. § 636(b)(1)(A) and (B), Fed. R. Civ. P. 72(a) and D. Del. LR 72.1, any objections to the Memorandum Order shall be filed within fourteen (14) days limited to five (5) pages after being served with the same. Any response is limited to five (5) pages. The parties are directed to the Courts Standing Order in Non-Pro Se matters for Objections Filed under Fed. R. Civ. P. 72 dated October 9, 2013, a copy of which is available on the courts website, www.ded.uscourts.gov. Signed by Judge Mary Pat Thynge on 2/25/15. (cak)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

SHELBYZYME, LLC,
Plaintiff,
v.
GENZYME CORPORATION,
Defendant.

:
:
:
:
:
:
:
:
:

C. A. No. 09-768-GMS

MEMORANDUM ORDER
Defendant Genzyme previously requested, on the basis of the crime-fraud
exception, that the court order plaintiff Shelbyzyme to produce certain withheld
documents relating to the abandonment and revival of U.S. Patent Application
08/790,491 (the “‘491 Application”),1 which eventually issued as U.S. Patent No.
7,011,831 (the “‘831 Patent”). From privilege logs provided by Shelbyzyme, Genzyme
identified specific documents from three time periods it sought to be produced.2
The court granted in part Genzyme’s request, finding Genzyme had met its
burden to demonstrate a prima facie case of fraud with the respect the third time period
and ordered “[t]he plaintiff shall produce the requested documents dated between
November 2001 and February 2002 that relate to the revival of U.S. Patent Application
08/790,491.”3 Under the heading “DOCUMENTS REQUESTED UNDER THE CRIME-

1

D.I. 201 at 1-2.
Id. at 5 (June to October 1999; October 1999 to November 2001; November 2001 to February
2002). Genzyme stated it “attempted to identify the withheld documents based on their descriptions in
privilege logs provided by Shelbyzyme.” Id. at 1 n.1.
3
D.I. 219 at 3 (emphasis added).
2

FRAUD EXCEPTION,” Genzyme identified specific documents from that time period
relating to the revival of the ‘491 application it requested be produced.4 In response to
the court’s order, Shelbyzyme produced one of those documents: a cover letter and an
unsigned Declaration of Catherine McGrath (“the 2001 declaration”).5 Shelbyzyme
informed Genzyme that the other identified documents had been previously produced or
did not relate to the revival of the ‘491 patent and, therefore, would not be produced.6
Genzyme now asks the court to require Shelbyzyme to produce all withheld
documents dated between November 2001 to February 2002, relating to the revival of
the ‘491 application, or to confirm that no such documents exist.7 In light of its review of
the 2001 declaration, Genzyme also seeks production of withheld documents, dated
between October 1999 and November 2001, relating to the abandonment of the ‘491
application.8 Shelbyzyme contends the court’s prior order is clear that it was required to
produce the documents requested by Genzyme that relate to the revival of the ‘491
application. The documents identified by Genzyme had either previously been
produced, did not relate to the revival of the ‘491 application, or, in the case of the of the
2001 declaration, was subsequently produced.9 Shelbyzyme also argues the court has
already rejected Genzyme’s request for documents between October 1999 and
November 2001, relating to the abandonment of the ‘491 application, and that decision

4

D.I. 201 at 5 n.10.
D.I. 240 at 1-2. In 2001, McGrath was Chief Counsel of the Research Foundation of the City
University of New York (“RF-CUNY”). RF-CUNY was the owner of the ‘491 application at the time it was
abandoned and revived. D.I. 201 at 2.
6
D.I. 240, Ex. B at 2.
7
Id. at 1.
8
Id.
9
Id. at 6.
5

2

should not be reversed.10 Shelbyzyme also provided the court with privileged
documents from November 2001 to February 2002 that potentially relate to the revival
of the ‘491 application for in camera review. It maintains, however, that any such
documents were not requested by Genzyme, not subject to the prior briefing to the court
or the court’s order and, therefore, remain privileged.11 The court reviewed those
materials to determine whether they indicate its prior denial of Genzyme’s request to
produce withheld documents relating to the abandonment of the ‘491 application should
be revisited.
First, the court agrees that Shelbyzyme has complied with the court’s previous
order regarding the production of withheld documents. Genzyme’s request was for
specific documents from three designated time periods. The court denied the request
as to the first two time periods and granted production of “the requested documents” in
the third time period that related to the revival of the ‘491 application.12 Shelbyzyme has
produced those requested documents, or explained they did not relate to the revival of
the ‘491 application and, thus, would not be produced. Therefore, Genzyme’s request
for production of additional documents from that time period is denied.
Having conducted an in camera review of the documents provided by
Shelbyzyme, the court concludes no information therein prompts the court to reverse its
prior denial of production of withheld documents concerning the abandonment of the
‘491 application. Additionally, the court determines the information and arguments

10

Id. at 7-9.
Id. at 6.
12
D.I. 219.
11

3

provided with Genzyme’s current request, and argument presented by counsel in
person, also fail to convince the court to reverse that conclusion.13 Consequently, the
court denies Genzyme’s request that withheld documents concerning the abandonment
of the ‘491 application be produced.
Pursuant to 28 U.S.C. § 636(b)(1)(A) and (B), FED. R. CIV. P. 72(a) and D. DEL.
LR 72.1, any objections to the Memorandum Order shall be filed within fourteen (14)
days limited to five (5) pages after being served with the same. Any response is limited
to five (5) pages.
The parties are directed to the Court’s Standing Order in Non-Pro Se matters for
Objections Filed under FED. R. CIV. P. 72 dated October 9, 2013, a copy of which is
available on the court’s website, www.ded.uscourts.gov.

Dated: February 25, 2015

/s/ Mary Pat Thynge
UNITED STATES MAGISTRATE JUDGE

13

For instance, the evidence before the court is inconclusive as to whether McGrath ever received
the 2001 declaration. It is her belief the first time she saw that declaration was in the course of this
litigation. D.I. 240, Ex. I at ¶ 3.

4