Mylan Inc. et al v. Analysis Group, Inc.
Filing
33
MEMORANDUM AND ORDER that plaintiffs' Motion to Review the Magistrate Judge's Order of August 27, 2018 Denying in Part Mylan's Motion to Compel Compliance with Subpoena Directed to Analysis Group, Inc. (Docs. 26 & 28 ) is denied and plaintiffs' objection to Magistrate Judge James's August 27, 2018 Order (Doc. 24 ) is overruled. Signed by District Judge Daniel D. Crabtree on 10/17/2018. (mg)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
MYLAN INC., et al.,
Plaintiffs,
v.
Case No. 18-mc-209-DDC-TJJ
ANALYSIS GROUP, INC.,
Defendant.
_____________________________________
MEMORANDUM AND ORDER
This matter comes before the court on Mylan Inc. and Mylan Specialty L.P.’s (“Mylan”)
Motion to Review the Magistrate Judge’s Order of August 27, 2018 Denying in Part Mylan’s
Motion to Compel Compliance with Subpoena Directed to Analysis Group, Inc. Docs. 26 & 28.
For reasons explained below, the court denies Mylan’s Motion.
I.
Factual and Procedural Background
On February 1, 2018, Mylan served a subpoena on Analysis Group, Inc. (“AG”), under
Federal Rule of Civil Procedure 45. Doc. 26-2. Mylan asserts that it issued this subpoena
seeking discovery from AG to support its defense in a related case, In re EpiPen (Epinephrine
Injection, USP) Marketing, Sales Practices and Antitrust Litigation, No. 17-2785-DDC-TJJ (D.
Kan.) (“the EpiPen MDL”). Specifically, Mylan contends that it seeks discovery from AG to
support its defense against plaintiff Sanofi-Aventis U.S. LLC’s (“Sanofi”) claim that Mylan
unlawfully excluded Auvi-Q—a rival product of the EpiPen once sold by Sanofi—from the
epinephrine auto-injector market. Mylan’s defense is that the Auvi-Q product failed because
Sanofi couldn’t compete with the EpiPen on the merits—including price—and not because
Mylan offered rebates on the EpiPen conditioned on favorable formulary placement.
Before Sanofi entered the epinephrine auto-injector market, it engaged AG, an economics
consulting firm, to provide information and advice about that market. AG performed its
consulting work for Sanofi in 2011 and 2012, before Sanofi launched Auvi-Q in 2013. Mylan
asserts that the discovery it seeks from AG will help prove that Sanofi failed to compete on the
merits—and not from any purported conduct by Mylan.
In response to the subpoena, AG produced responsive documents “that were prepared for
and sent to or received from Sanofi,” but it withheld internal documents that AG never provided
to Sanofi. See generally Doc. 26-3. AG also withheld, it says, documents that it never
“received” from Sanofi. E.g., Doc. 26-3 at 6 (response to category No. 3). On April 18, 2018,
Mylan filed a Motion to Compel Compliance with Subpoena Directed to Analysis Group. Doc.
2.1 Among other things, Mylan’s Motion moved to compel AG to produce this collection of
“internal” documents that it had withheld from production.
On August 27, 2018, Magistrate Judge Teresa J. James granted Mylan’s Motion to
Compel in part and denied it in part. Doc. 24. Specifically, Judge James directed AG to produce
documents responsive to Mylan’s Request No. 1. Id. at 10–11, 13. Request No. 1 seeks “[a]ll
documents constituting or relating to any actual or potential contract, agreement, proposal,
negotiation, or commission of services between [AG] and Sanofi.” Doc. 26-2 at 1. But Judge
James declined to compel AG to produce “internal deliberations, communications, predictions,
assessments, recommendations, research and analysis, projections, estimates, draft advice, and
analyses AG performed.” Doc. 24 at 7–8. Judge James determined that Rule 45(d)(3)(B)(ii)
protects disclosure of the requested documents. This portion of Rule 45 allows a court to quash
1
Mylan filed its Motion in the District of Massachusetts and also moved the court to transfer the
matter to this district. Mylan Inc. v. Analysis Grp., Inc., No. 18-mc-91153-FDS (D. Mass. Apr. 18, 2018),
ECF No. 2. On April 20, 2018, the Massachusetts federal court transferred the case to the District of
Kansas. Doc. 5.
2
or modify a subpoena if it requires “disclosing an unretained expert’s opinion or information that
does not describe specific occurrences in dispute and results from the expert’s study that was not
requested by a party.” Judge James found that “any analysis AG preformed for Sanofi would
qualify as expert opinion that, because Mylan has not paid for it, is unretained and protected by
Rule 45.” Doc. 24 at 8. Judge James also recognized that Rule 45 contains an exception to the
protection of materials under Rule 45(d)(3)(B)(ii). This exception applies when the requesting
party “shows a substantial need” for the discovery. Fed. R. Civ. P. 45(d)(3)(C)(i). Judge James
held that Mylan had not demonstrated a substantial need for AG’s expert materials beyond those
AG already had agreed to produce (i.e., materials sent to or received from Sanofi as part of its
consulting work for Sanofi). Doc. 24 at 9.
Mylan’s Motion for Review asserts that Judge James incorrectly applied Rule 45 in her
August 27, 2018, Order. Thus, Mylan contends, Judge James’s Order is “contrary to law.” Doc.
26 at 1. And so, Mylan argues, the court should set aside Judge James’s Order under Federal
Rule of Civil Procedure 72(a). The court addresses and decides Mylan’s request, below.
II.
Legal Standard
Federal Rule of Civil Procedure 72(a) permits a party to present specific, written
objections to a magistrate judge’s order. When reviewing a magistrate judge’s order deciding
nondispositive pretrial matters, the district court applies a “clearly erroneous or contrary to law”
standard of review. See First Union Mortg. Corp. v. Smith, 229 F.3d 992, 995 (10th Cir. 2000)
(quoting Ocelot Oil Corp. v. Sparrow Indus., 847 F.2d 1458, 1461–62 (10th Cir. 1988)); 28
U.S.C. § 636(b)(1)(A); Fed. R. Civ. P. 72(a). This clearly erroneous standard doesn’t permit the
district court to conduct a de novo review of the factual findings; instead, it must affirm a
magistrate judge’s order unless a full review of the evidence leaves it “with the definite and firm
3
conviction that a mistake has been committed.” Ocelot Oil Corp., 847 F.2d at 1464. In contrast,
“the contrary to law” standard permits the district court to conduct an independent review of the
magistrate judge’s purely legal determinations. Sprint Commc’ns Co. v. Vonage Holdings Corp.,
500 F. Supp. 2d 1290, 1346 (D. Kan. 2007) (citations and internal quotation marks omitted). A
magistrate judge’s order is contrary to law when it “fails to apply or misapplies relevant statutes,
case law or rules of procedure.” Walker v. Bd. of Cty. Comm’rs., No. 09-1316-MLB, 2011 WL
2790203, at *2 (D. Kan. July 14, 2011) (citing Botta v. Barnhart, 475 F. Supp. 2d 174, 185
(E.D.N.Y. 2007)).
III.
Analysis
Mylan asserts that Judge James erred by holding that Rule 45(d)(3)(B)(ii) protects
disclosure of the documents that Mylan’s subpoena demanded AG to produce. Mylan thus asks
the court to vacate that portion of Judge James’s Order and thus compel AG to produce all
responsive documents resulting from its work for Sanofi regardless of whether AG had provided
the documents to or received them from Sanofi. Mylan asserts three principal arguments to
support its Motion. First, Mylan argues that the subpoenaed materials fall outside the scope of
Rule 45(d)(3)(B)(ii) because they were “requested by a party”—i.e., Sanofi. Next, Mylan
contends that Rule 45(d)(3)(B)(ii) does not protect the subpoenaed materials because they
describe “specific occurrences in dispute.” Finally, Mylan asserts that Judge James erred by
exercising her discretion to apply Rule 45(d)(3)(B)(ii) because she never considered certain
factors identified in the 1991 Advisory Committee’s Notes to Rule 45. The court addresses each
of Mylan’s arguments, in turn, below.
4
A. Are the subpoenaed materials “requested by a party” within the meaning of
Rule 45(d)(3)(B)(ii)?
Rule 45(d)(3)(B)(ii) allows a court to quash or modify a subpoena if it requires
“disclosing an unretained expert’s opinion or information that . . . results from the expert’s study
that was not requested by a party.” Id. (emphasis added). Mylan argues here that Rule
45(d)(3)(B)(ii) does not protect disclosure of the subpoenaed materials because they were
“requested by a party”—that is, Sanofi. Sanofi, of course, is a party to the EpiPen MDL and it is
the entity who asked AG to perform its consulting work.
Before it reaches the merits of this argument, the court considers whether Mylan has
waived it. AG asserts that Mylan has waived this argument because it never presented it to
Judge James. Indeed, the Tenth Circuit has held that “‘[i]ssues raised for the first time in
objections to the magistrate judge’s recommendation are deemed waived.’” ClearOne
Commc’ns, Inc. v. Biamp Sys., 653 F.3d 1163, 1185 (10th Cir. 2011) (quoting Marshall v.
Chater, 75 F.3d 1421, 1426–27 (10th Cir. 1996)). Mylan has not waived its argument. In its
response to Mylan’s Motion to Compel, AG asserted that Rule 45 protects disclosure of the
subpoenaed documents. See generally Doc. 15. In its Reply, Mylan asserted: “AG[ ] cannot
here rely on Rule 45(d)(3)(B)(ii)’s ‘unretained expert’ rule . . . to withhold documents, because
AG[ ] witnessed and participated in the ‘specific occurrences in dispute’ while conducting a
‘study . . . requested by a party’—i.e., Sanofi.” Doc. 18 at 8 (quoting Rule 45(d)(3)(B)(ii)).
AG asserts that this one sentence isn’t enough. Mylan, AG says, made no substantive
argument or cited any case law to argue that the subpoenaed materials were “requested by a
party.” AG contends that Mylan raised this argument “in a perfunctory manner,” and thus, the
court should find it waived. See United States v. Hardman, 297 F.3d 1116, 1131 (10th Cir.
2002) (“Arguments raised in a perfunctory manner, such as in a footnote, are waived.”).
5
Mylan did not assert this argument to Judge James in a perfunctory fashion. Mylan
argued to Judge James that none of the subpoenaed materials qualify for relief under the
language of Rule 45(d)(3)(B)(ii). Doc. 18 at 8–10. As part of its argument, Mylan asserted that
the subpoenaed materials do not come within the scope of the rule because a party—Sanofi—had
requested them. Id. at 8. The court thus finds that Mylan has preserved this issue for review.
Turning next to the substance of Mylan’s objection, Mylan argues that Judge James erred
when she held that Rule 45(d)(3)(B)(ii) protects disclosure of the subpoenaed materials. This
conclusion contradicts, Mylan contends, the Rule’s language because the materials at issue
“result[ ] from the [unretained] expert’s study” and were “requested by a party.” Neither Mylan
nor AG disputes that Rule 45(d)(3)(B)(ii) applies only to an “unretained expert’s” materials.
And neither party argues that AG is not such an “unretained expert” in the EpiPen MDL. AG
asserts that no party to the EpiPen MDL has retained AG as a testifying or non-testifying expert
in that case. Mylan does not challenge this proposition.
The Advisory Committee’s notes to Rule 45 explain that subsection (d)(3)(B)(ii)
“provides appropriate protection for the intellectual property of the non-party witness; it does not
apply to the expert retained by a party, whose information is subject to the provisions of Rule
26(b)(4).” Fed. R. Civ. P. 45 advisory committee’s note to 1991 amendment. “The purpose of
this rule is to protect experts from being required to provide expert advice or assistance without
proper compensation.” Friedland v. TIC—The Indus. Co., No. 04-cv-01263-PSF-MEH, 2006
WL 2583113, at *2 (D. Colo. Sept. 5, 2006) (citing In re Pub. Offering PLE Antitrust Litig., 233
F.R.D. 70, 76 (D. Mass. 2006)). As the Rule’s Advisory Committee’s notes explain, “[a]
growing problem has been the use of subpoenas to compel the giving of evidence and
information by unretained experts. Experts are not exempt from the duty to give evidence, . . .
6
but compulsion to give evidence may threaten the intellectual property of experts [who are]
denied the opportunity to bargain for the value of their services.” Fed. R. Civ. P. 45 advisory
committee’s note to 1991 amendment.
Neither party cites a case with facts similar to the ones presented here. Sanofi,
anticipating its launch of the rival Auvi-Q, hired AG to perform consulting work about the
epinephrine auto-injector market. AG performed its work several years before the EpiPen MDL
litigation commenced. Neither Sanofi nor Mylan has retained AG as an expert in the EpiPen
MDL. But now, Mylan’s subpoena tries to force AG to produce internal consulting work even
though Mylan never paid AG for that work.
AG asserts that the Advisory Committee’s reference in its note to Rule 26(b)(4)—a rule
that applies to experts retained by parties to testify at trial or to provide consulting work about
the specific pending or anticipated litigation—makes one thing clear about Rule 45(d)(3)(B)(ii):
Its reference to “party” means a party to the litigation who has requested the unretained expert’s
opinion specifically for the pending litigation. AG argues that its opinions do not qualify as
unretained expert opinion under that definition because Sanofi never asked AG to provide
unretained expert opinions for the EpiPen MDL.
To support its reading of the Rule, AG cites Presidio Components Inc. v. American
Technical Ceramics Corp., No. 14-CV-2061-H, 2015 WL 12843187 (S.D. Cal. Oct. 5, 2015). In
that case, the defendant served a subpoena on a third party whom the plaintiff had retained as an
expert in an earlier lawsuit between the two parties. Id. at *1. Neither party had retained the
expert in the current pending case, a second lawsuit between the same parties. Id. Thus, the
California court reasoned, “it appears that [defendant] is attempting to use the subpoena at issue
7
to force [the expert] to act as an unpaid expert witness for [defendant]” in the pending litigation.
Id. Exercising its discretion, the court quashed the subpoena under Rule 45(d)(3)(B)(ii).
Presidio’s facts are somewhat similar to the ones here. Like the Presidio plaintiff, Sanofi
hired AG to perform consulting work about a different matter—one not involving the current
litigation. Also like Presidio, no party to the present litigation—the EpiPen MDL—has retained
AG as an expert in that current case. Even though the Presidio plaintiff previously had requested
the expert to perform his study, the California federal court still held that Rule 45(d)(3)(B)(ii)
protected the expert’s materials because the defendant was using a subpoena to force the expert
to act as an unpaid expert for the defendant in the second case. That resembles what Mylan is
trying to do here.
Mylan tries to neutralize the value of Presidio’s precedent, pointing out one way that it
differs from the facts here. Namely, Sanofi never retained AG as a litigation expert. Thus,
Mylan argues, Presidio never considered whether the subpoena sought an “unretained expert’s”
materials that were “not requested by a party,” as Rule 45(d)(3)(B)(ii) requires. This factual
distinction makes no analytical difference. Both Presidio and this case involve a subpoena
directed at someone who is an “unretained expert witness” in the present litigation. In both
situations, a party to the current litigation previously had engaged the expert to provide opinions
about another matter. The California federal court held that Rule 45(d)(3)(B)(ii) protected the
subpoenaed information, even though the Presidio plaintiff previously had requested them.
Presidio’s holding makes sense, given the plain meaning of the words in Rule 45. This
rule protects disclosure of an “unretained expert’s” materials that “result[ ] from the [unretained]
expert’s study that was not requested by a party.” Fed. R. Civ. P. 45(d)(3)(B)(ii). Here, Sanofi
never asked AG to perform any work as an “unretained expert” for this litigation. Instead,
8
Sanofi engaged AG to perform consulting work many years before the EpiPen MDL
commenced. At least two other courts have held that Rule 45 protects unretained expert opinions
even when a party to the current litigation previously had engaged the expert about another
matter. See, e.g., MedImmune, LLC v. PDL v. Biopharma, Inc., No. C08-05590 JF (HRL), 2010
WL 2794390, at *2 (N.D. Cal. July 15, 2010) (rejecting plaintiff’s argument that Rule
45(d)(3)(B)(ii) did not apply to an unretained expert’s declarations when “the work resulting in
those declarations was requested by [defendant]” in an earlier matter because “the fact remains
that the [unretained expert] has not been retained as an expert by any party in this lawsuit”)
(emphasis added); Intervet, Inc. v. Merial Ltd., No. 8:07CV194, 2007 WL 1797643, at *2 (D.
Neb. June 20, 2007) (holding Rule 45 protected opinions of an unretained expert whom a party
had retained as a consulting expert in an earlier lawsuit because, among other things, the expert
“[had] not been retained or designated as an expert in the pending litigation”). The court finds
the holdings of these cases persuasive, and thus follows them here.2
Mylan cites three cases trying to support its argument that Rule 45(d)(3)(B)(ii) does not
protect the subpoenaed materials because they previously were “requested by a party”—i.e.,
Sanofi. Each case is factually distinguishable, and thus the court does not apply them here. And,
importantly, no case cited by Mylan specifically analyzed whether the Rule protected the
subpoenaed materials because they “result[ed] from the expert’s study that was not requested by
a party.” Fed. R. Civ. P. 45(d)(3)(B)(ii). Instead, the analyses in Mylan’s cases focused on
2
The parties do not cite any Tenth Circuit case law on this issue, and the court’s research has not
located any Tenth Circuit authority either. The court predicts that the Tenth Circuit, if presented with this
question, would find the holdings of Presidio and the two other cited cases persuasive and apply them to
the facts presented here.
9
whether the subpoenaed materials satisfied a different part of the rule—the requirement that
material “describe specific occurrences in dispute.” Id.3
For example, in Natural Resources Defense Council v. Zinke, the court held that Rule
45(d)(3)(B)(ii) did not apply to protect two government employees from “giving testimony about
the expert opinions they have already formed and provided to defendants in the course of their
work about the subject matter in this litigation.” No. 05-cv-1207, 2018 WL 1899609, at *10
(E.D. Cal. Apr. 20, 2018). Zinke reasoned that the witnesses were “experts for Defendants
whose job is to provide expert advice on the subject relevant to this litigation.” Id. And it
concluded that “[s]ome of these expert opinions are reflected in the documents that are part of
the administrative record and are already at issue in this case . . . .” Thus, Zinke held, the
government employees’ proposed testimony “describes the specific occurrences in dispute” in
the lawsuit, and the government failed to meet “its burden in demonstrating that the limitation on
unretained expert testimony in Rule 45(d)(3)(B)(ii) is applicable.” Id. at *9. Based on these
facts, Zinke concluded that the two government employees had provided unretained expert
opinions specifically for the pending litigation. And, because defendant employed them and
providing such expert opinions was part of their jobs, it was proper to infer that defendant had
requested the expert’s opinions for that case. Those circumstances differ from the situation
presented here. Sanofi never asked AG to provide unretained expert opinions for or about the
EpiPen MDL. Instead, AG performed its consulting work for Sanofi many years ago—well
before the EpiPen MDL commenced.
3
The court analyzes this part of Rule 45(d)(3)(B)(ii) and its application to the facts here in the
following subsection. See infra Part III.B.
10
Next, Mylan relies on Intervet, Inc. v. Merial Ltd..4 There, the court compelled a doctor
to testify “about the studies or work he performed at the request of [plaintiff] in furtherance of
the development of [plaintiff’s] vaccine.” No. 4:08CV3042, 2008 WL 1837257, at *4 (D. Neb.
Apr. 22, 2008). The court explained that plaintiff never had retained the doctor as an expert,5
and it reasoned that defendant was not seeking the doctor’s testimony as an expert but instead as
a “fact witness.” Id. That is not the situation presented by the current dispute in this case.
Mylan seeks internal documents showing how an expert, once engaged by Sanofi (albeit not as a
litigation expert), reached certain opinions about competition in the epinephrine auto-injector
market. AG is more than a fact witness. Indeed, Mylan never disputes that AG qualifies as an
“unretained expert” in the sense that Rule 45 uses that term. Thus, the court refuses to compel
AG to produce the subpoenaed materials because they amount to more than information gathered
by a fact witness.
Finally, Mylan relies on Brogren v. Pohlad, a case where the court held that Rule
45(d)(3)(B)(ii) did not apply to protect investment advice that a subpoenaed party previously had
provided to a defendant before the lawsuit commenced. No. 94-cv-6301, 1994 WL 654917, at
*2 (N.D. Ill. Nov. 14, 1994). Brogren reasoned that plaintiff merely sought “opinions that [the
expert] has previously formed and expressed.” Id. (emphasis added). And the court found that
4
As cited above, this same court quashed a subpoena under Rule 45(d)(3)(B)(ii) in a different but
related case. Intervet, Inc. v. Merial Ltd., No. 8:07CV194, 2007 WL 1797643, at *2 (D. Neb. June 20,
2007). In that case, a party previously had retained the expert for another matter, but the court found that
Rule 45(d)(3)(B)(ii) applied because the expert was not retained or designated in the pending case. Id.
5
The court contrasted this expert with the one at issue in the different but related case—Intervet,
Inc., 2007 WL 1797643. In that case, a party had retained the expert at issue but in a different and
previous matter. Id. at *2. That fact made the unretained expert at issue in the present case different. See
Intervet, Inc. v. Merial Ltd., 2008 WL 1837257, at *4 (“Unlike [the unretained expert in the different but
related case] . . . [the unretained expert in the present case] has never been retained by [plaintiff] as an
expert.”).
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the unretained expert was the “best witness to testify [about] what investment advice [the expert]
rendered to [the party].” AG already produced to Mylan the opinions that it has expressed to
Sanofi and the advice it rendered to Sanofi. This disclosure fulfills the results compelled by
Brogren. But nothing in Brogren supports the result that Mylan tries to wring from the case, i.e.,
that the expert must produce internal documents about its deliberative process in reaching those
opinions. Brogren is inapposite to the facts here.
For all these reasons, the court concludes that Judge James properly held that the
subpoenaed materials come within Rule 45(d)(3)(B)(ii). Mylan’s subpoena tried to require
disclosure of “an unretained expert’s opinion or information that . . . results from the expert’s
study that was not requested by a party.” Here, no party has requested AG to provide expert
advice in the EpiPen MDL. Thus, although Sanofi previously engaged AG to provide it with
certain advice, the subpoena seeks materials that “result[ ] from the expert’s study” that was not
requested by a party for the present litigation.
B. Do the subpoenaed materials describe “specific occurrences in dispute” as
Rule 45(d)(3)(B)(ii) requires?
Next, Mylan argues that Rule 45(d)(3)(B)(ii) does not protect the subpoenaed materials
because they describe specific occurrences in dispute in the EpiPen MDL. Rule 45(d)(3)(B)(ii)
only protects “an unretained expert’s opinion or information that does not describe specific
occurrences in dispute.” Fed. R. Civ. P. 45(d)(3)(B)(ii) (emphasis added). Mylan contends that
the subpoenaed materials do describe specific occurrences in dispute, and thus Rule 45 does not
protect their disclosure.
To support this argument, Mylan cites cases holding that Rule 45(d)(3)(B)(ii) does not
protect expert materials when they fully consist of facts. See, e.g., In re Domestic Drywall
Antitrust Litig., 300 F.R.D. 234, 242 (E.D. Pa. 2014) (holding that subpoenaed materials were
12
subject to disclosure because they were “clearly of a factual nature that falls outside the
protections of Rule 45(d)(3)(B)(ii)”); Intervet, Inc. v. Merial Ltd., No. 4:08CV3042, 2008 WL
1837257, at *4 (D. Neb. Apr. 22, 2008) (holding that a defendant could depose an expert on
topics for which he merely was a “fact witness”); In re Pub. Offering PLE Antitrust Litig., 233
F.R.D. 70, 77 (D. Mass. 2006) (“Because the antitrust plaintiffs sought factual information from
[a nonparty who had made certain statements in a published article about industry pricing
practices that] describ[ed] specific events and occurrences in dispute in the antitrust litigation,
such information is not shielded by Rule 45(d)(3)(B)(ii).”). Indeed, the Advisory Committee’s
notes to Rule 45 provide that a court’s discretion when deciding to apply Rule 45(d)(3)(B)(ii)
“should be informed by ‘the degree to which the expert is being called because of his knowledge
of facts relevant to the case rather than in order to give opinion testimony . . . .’” Fed. R. Civ. P.
45 advisory committee’s note to 1991 amendment (quoting Kaufman v. Edelstein, 539 F.2d 811,
822 (2d Cir. 1976)).
Mylan argues that the internal documents sought by the contested subpoena “describe the
specific occurrences in dispute” because they provide the basis for AG’s research about the
epinephrine auto-injector market and its resulting advice to Sanofi. AG disagrees. AG argues
that Mylan’s subpoena here does not seek factual material. Instead, AG contends, Mylan seeks
opinions and information resulting from AG’s expert work as Sanofi’s consultant. AG thus
reasons that Rule 45(d)(3)(B)(ii) protects such materials from the subpoena. The court agrees.
Judge James’s ruling refused to compel AG to produce “internal deliberations,
communications, predictions, assessments, recommendations, research and analysis, projections,
estimates, draft advice, and analyses AG performed.” Doc. 24 at 7–8. Although the court has
located no case with facts exactly like the ones presented here, courts consistently have held that
13
Rule 45(d)(3)(B)(ii) protects information that results from an expert’s study. This type of
information is not purely factual information. To the contrary, it is information collected as part
of the expert’s unretained work. And Rule 45 protects the results of the expert’s work. See, e.g.,
Daggett v. Scott, No. 15-mc-00065-CMA-MJW, 2015 WL 3407314, at *2 (D. Colo. May 26,
2015) (holding that Rule 45(d)(3)(B)(ii) does not protect discovery of facts but precludes
discovery of an expert’s “methodology, analysis, or expertise”); Glaxosmithkline Consumer
Healthcare, L.P. v. Merix Pharm. Corp., No. 2:05-mc-436-TS-DN, 2007 WL 1051759, at *3 (D.
Utah Apr. 2, 2007) (denying defendant’s motion to compel testimony of an unretained expert
because defendant merely sought testimony “about facts helpful to [its] theory of the case, but
these [facts] came to [the expert’s] attention by his [expert] study” and thus Rule 45(d)(3)(B)(ii)
protected that testimony from disclosure).
For example, in Daggett v. Scott, the Colorado court explained that Rule 45(d)(3)(B)(ii)
distinguishes between two types of material: “the expert’s factual record [that] ‘describe[s]
specific occurrences in dispute’ and therefore falls outside the protection of Rule 45(d)(3)(B)(ii);
but the same expert’s own analysis ‘does not describe specific occurrences in dispute’; rather, it
‘results from the expert’s study’ and is protected by the rule.’” 2015 WL 3407314, at *2
(quoting Fed. R. Civ. P. 45(d)(3)(B)(ii)). The Colorado federal court thus held that a party could
discover the factual basis for the expert’s report but that it could not discover information about
the expert’s “methodology, analysis, or expertise.”
The types of materials requested here—i.e., internal deliberations, communications,
predictions, assessments, recommendations, research and analysis, projections, estimates, draft
advice, and analyses—are not ones containing merely factual information. Instead, these types
of materials result from AG’s expert work that Sanofi hired it to perform when it was
14
anticipating its launch of Auvi-Q and well before the EpiPen MDL commenced. Mylan cites no
case showing that it is entitled to secure this type of material when it never has retained—or
compensated—AG for that work. Judge James did not err by holding that Rule 45(d)(3)(B)(ii)
protects disclosure of the materials that Mylan’s motion seeks to compel AG to produce.
C. Did Judge James err by not applying the factors from the Advisory
Committee’s Notes?
Last, Mylan argues that Judge James erred by failing to apply certain factors recited in
Rule 45’s Advisory Committee’s notes when she exercised her discretion to apply that rule to the
subpoenaed materials. The Advisory Committee’s notes provide:
[T]he district court’s discretion in these matters should be informed by “[1] the
degree to which the expert is being called because of his knowledge of facts
relevant to the case rather than in order to give opinion testimony; [2] the difference
between testifying to a previously formed or expressed opinion and forming a new
one; [3] the possibility that, for other reasons, the witness is a unique expert; [4] the
extent to which the calling party is able to show the unlikelihood that any
comparable witness will willingly testify; and [5] the degree to which the witness
is able to show that he has been oppressed by having continually to testify . . . .”
Fed. R. Civ. P. 45 advisory committee’s note to 1991 amendment (quoting Kaufman v. Edelstein,
539 F.2d 811, 822 (2d Cir. 1976)) (emphasis added).
AG again asserts that Mylan has waived this argument because it never made the
argument to Judge James. See, e.g., ClearOne Commc’ns, Inc. v. Biamp Sys., 653 F.3d 1163,
1185 (10th Cir. 2011) (holding that “‘[i]ssues raised for the first time in objections to the
magistrate judge’s recommendation are deemed waived’” (quoting Marshall v. Chater, 75 F.3d
1421, 1426–27 (10th Cir. 1996))). This time, the court agrees with AG’s waiver argument.
Mylan’s briefing to Judge James never argued that she should apply the factors from the
Advisory Committee’s notes—much less that these factors favored Judge James exercising her
discretion by declining to apply Rule 45(d)(3)(B)(ii) to the subpoenaed material. See Doc. 3
15
(Mylan’s Memorandum in Support of its Motion to Compel); see also Docs. 18 & 21 (Mylan’s
Redacted and Sealed Reply to its Motion to Compel).6 Because Mylan never asserted this
argument to the Magistrate Judge, the court finds that Mylan has waived the opportunity to
present it in its Objection here.
But, even if Mylan hadn’t waived this argument, the Advisory Committee’s notes never
mandate courts to apply these factors. Instead, a court has the discretion to decide whether to
apply Rule 45(d)(3)(B)(ii). See Fed. R. Civ. P. 45 advisory committee’s note to 1991
amendment (providing factors that a district court should consider when exercising “the district
court’s discretion” to apply Rule 45(d)(3)(B)(ii)); see also SEC v. Merrill Scott & Assocs., Ltd.,
600 F.3d 1262, 1271 (10th Cir. 2010) (“The district court has broad discretion over the control of
discovery, and [the Tenth Circuit] will not set aside discovery rulings absent an abuse of that
discretion.”) (citations and internal quotation marks omitted). And the Advisory Committee’s
notes suggest that a court “should” consider the factors above when exercising that discretion.
Fed. R. Civ. P. 45 advisory committee’s note to 1991 amendment. But it never requires that a
court must apply these factors. The court thus concludes that Judge James did not err by
exercising her discretion to decide that Rule 45(d)(3)(B)(ii) protects the subpoenaed materials
that Mylan seeks from AG.
IV.
Conclusion
For all these reasons, the court concludes that Judge James’s ruling was not clearly
erroneous or contrary to law. The court thus denies Mylan’s objection to that Order.
6
Mylan correctly asserts that it cited the Rule’s Advisory Committee’s notes in its Reply. Doc. 21
at 9. Specifically, Mylan cited the Advisory Committee’s notes on page 9 of its Reply. But Mylan’s
citation there directed Judge James to a completely different portion of the Advisory Committee’s notes.
Mylan never directed Judge James to the portion of the notes reciting the factors that Mylan now argues
she failed to consider. Mylan simply never asserted the argument to Judge James that it seeks to assert
here in its Objection.
16
IT IS THEREFORE ORDERED BY THE COURT THAT plaintiffs’ Motion to
Review the Magistrate Judge’s Order of August 27, 2018 Denying in Part Mylan’s Motion to
Compel Compliance with Subpoena Directed to Analysis Group, Inc. (Docs. 26 & 28) is denied
and plaintiffs’ objection to Magistrate Judge James’s August 27, 2018 Order (Doc. 24) is
overruled.
IT IS SO ORDERED.
Dated this 17th day of October, 2018, at Kansas City, Kansas.
s/ Daniel D. Crabtree
Daniel D. Crabtree
United States District Judge
17
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