Ferring B.V. v. Watson Pharmaceuticals, Inc. et al

Filing 326

ORDER regarding documents submitted for the court's in camera review pursuant to order 306 . Signed by Magistrate Judge Valerie P. Cooke on 4/23/13. (Copies have been distributed pursuant to the NEF - DN)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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FERRING B.V.,

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Plaintiff,
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vs.
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WATSON LABORATORIES, INC., et al.,
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Defendant(s)
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______________________________________)

3:11-cv-0481-RCJ (VPC)
ORDER

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On October 17, 2012, this court granted the motion of defendants, Apotex, Inc., Apotex Corp.,

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(“Apotex”) and Watson Pharmaceuticals, Inc. – Florida’s (“Watson”) motion to compel production of

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unredacted documents relating to plaintiff, Ferring B.V.’s (“Ferring”) life cycle management of Lysteda,

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including Ferring’s development and plan to launch any alternative tranexamic acid formulations (#260).

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Ferring filed an objection to this court’s order (#265) and Apotex and Watson responded (#271).

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Ferring contended that the information this court compelled Ferring to produce is not

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discoverable because it is irrelevant to this patent infringement case. Ferring further argued that internal

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documents regarding the Abandoned Project are not relevant – and hence, not discoverable – because

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the patent owner’s subjective beliefs about obviousness or non-obviousness are irrelevant to the issue

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(#306) (citations omitted). Defendants’ position was that the sought-after documents might contain

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Ferring’s subjective beliefs about obviousness or non-obviousness of the formulations presented in the

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Abandoned Project, but also objective, factual information that may tend to prove the obviousness or

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non-obviousness of the formulations presented by the Abandoned Project. Id. The District Court stated,

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“If Defendants’ alleged infringing formulations are similar to the formulations represented by the

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Abandoned Project, such objective, factual information is certainly relevant in the present case,

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regardless of Plaintiff’s subjective opinions that also appear in the documents are irrelevant and therefore

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inadmissible.” Id. However, the District Court recognized Ferring’s legitimate concern in producing

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internal assessments and strategies to a competitor. Id.

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Based on this rationale, the District Court overruled this court’s order in part and directed Ferring

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“to submit the requested documents in camera to the magistrate judge, who will then identify irrelevant

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materials concerning plaintiff’s subjective assessments, business strategies, etc., and order Plaintiff to

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produce to Defendants copies of the material as redacted by the magistrate judge, not as independently

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redacted by Plaintiff.” Id.

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Under cover of a March 29, 2013 letter to this court, Ferring’s counsel submitted two sets of the

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same redacted pages. The first set consists of redacted versions of the documents as originally produced

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to defendants. The second set consists of documents that have had all redactions removed in compliance

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with the District Courts March 11, 2013 order (#306). The unredacted documents have the same bates

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numbering as the original documents.

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The court has reviewed the District Court’s order, and it has conducted a page-by-page review

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of the two sets of documents. This court concludes that all of the redactions concern Ferring’s subjective

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assessments and business strategies relating to the Abandoned Project. The redactions reveal no

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objective information about the formulation of the Abandoned Project; therefore, it will not lead to the

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discovery of admissible evidence in light of the District Court’s order (#306). Based upon the foregoing,

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Ferring will not be ordered to produce the redacted documents at issue.

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Ferring’s counsel is directed to make arrangements with Lisa Mann, Courtroom Administrator,
to retrieve the documents submitted to the court for in camera review.

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IT IS SO ORDERED.

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Dated April 23, 2013

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______________________________________
UNITED STATES MAGISTRATE JUDGE

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