SHIRE LLC et al v. AMNEAL PHARMACEUTICALS, LLC

Filing 626

OPINION fld. Signed by Magistrate Judge Cathy L. Waldor on 4/1/14. (sr, )

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
SHIRE LLC, et al.,

:
:
Plaintiffs,
:
:
v.
:
:
AMNEAL PHARMACEUTICALS LLC, :
et al.,
:
Defendant.
:
:
___________________________________ :

Civil Action No. 2:11-cv-03781 (SRC)(CLW)
(CONSOLIDATED)
OPINION

CATHY L. WALDOR, United States Magistrate Judge.
I.

Introduction
Pending before the Court is an informal application by Roxane Laboratories, Inc.

(“Defendant”) to compel Plaintiffs Shire LLC and Shire Development LLC (collectively
“Shire”) to return or destroy privileged documents produced by co-defendants Johnson Matthey,
Inc. and Johnson Matthey Pharmaceutical Materials (collectively “JM”). (Docket Entry No. 430,
“Letter Request”). For the reasons set forth below Defendant’s application is hereby DENIED.
II.

Background & Procedural History
On November 1, 2013, Defendant asked the Court to compel Shire to return, sequester,

or destroy documents produced by JM pursuant to Fed. R. Civ. P. 26(b)(5)(B), Fed. R. Evid.
502(b), and the clawback procedure set forth in paragraph 16 of the Discovery Confidentiality
Order (“DCO”). (“Letter Request”). Initially Defendant argued for the return or destruction of
more than 100 emails and attachments containing confidential information that is subject to the
attorney-client privilege and work-product protection. (Id. at 2). The parties met and conferred
narrowing the controversy to five emails and corresponding attachments. These five emails are

part of Exhibit 2 attached to Defendant’s letter to the Court dated March 13, 2014. (Docket Entry
No. 547, “Exhibit 2 Documents”).
II.

Discussion
A. Parties’ Arguments
Defendant asserts that a common-interest or joint-defense privilege exists between the

defendants in this case and that JM cannot unilaterally waive the privilege without consent from
the other members of the common-interest community. (Letter Request at 2).
Shire argues that Defendant cannot assert a claim of privilege and that no joint-defense
privilege exists between JM and Defendant. (Docket Entry No. 433, “Letter Response”). Even if
a joint-defense agreement was in place, the privilege could be waived by JM alone. (Id.). Here,
Shire contends that JM intentionally waived the privilege as to these communications when it
permitted several of its fact witnesses to testify about them. (Id.).
B. Analysis

The attorney-client privilege protects communications between attorneys and
clients from compelled disclosure. It applies to any communication that satisfies
the following elements: it must be (1) a communication (2) made between
privileged persons (3) in confidence (4) for the purpose of obtaining or providing
legal assistance for the client.
Teleglobe Commc’ns Corp. v. BCE, Inc., 493 F.3d 345, 359 (3d Cir. 2007). “Disclosing a
communication to a third party unquestionably waives the privilege.” Id. at 361.
The standard for work product doctrine is governed by Fed. R. Civ. P. 26(b)(3) and
“shelters the mental processes of the attorney, providing a privileged area within which he can
analyze and prepare his client’s case.” United States v. Nobles, 422 U.S. 225, 238 (1975); United
Coal Cos. V. Powell Constr. Co., 839 F.2d 958, 966 (3d Cir. 1988). Thus, the rule prevents an

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adverse litigant from examining “documents and tangible things that are prepared in anticipation
of litigation.” Fed. R. Civ. P. 26(b)(3).
The Community-of-Interest doctrine allows "attorneys representing different clients with
similar legal interests to share information without having to disclose it to others." Teleglobe
Commc’ns Corp., 493 F.3d at 364. If applicable, the doctrine protects communications made
between attorneys when all members of the community share a “common legal interest” in the
shared communication." Id. (emphasis added). Thus, to be eligible for the protection, the
communications must be between two attorneys representing different members of the
community of interest. Id. It is not an independent privilege, but rather, an exception to the
general rule that disclosure of a privileged communication to a third-party waives the privilege.
See, e.g., Cavallaro v. United States, 284 F.3d 236, 250 (1st Cir. 2002) ("The common interest
doctrine . . . is not an independent basis for privilege, but an exception to the general rule that the
attorney-client privilege is waived when privileged information is disclosed to a third-party."
(quotation omitted)).
The degree of common legal interest required to qualify under the doctrine is the subject
of some debate, ranging from "substantially similar" to "identical." See, e.g., La. Mun. Police
Emps. Ret. Sys. v. Sealed Air, 253 F.R.D. 300, 309-10 (D.N.J. 2008) (substantially similar legal
interests sufficient); Duplan Corp. v. Deering Milliken, Inc., 397 F. Supp. 1146, 1172 (D.S.C.
1974) (identical interests required). The burden to show the privilege has not been waived, and
thus, that the doctrine applies, rests with the party resisting disclosure. Hoffmann La Roche, Inc.
v. Roxane Labs., Inc., 2011 U.S. Dist. LEXIS 50404, 14-16 (D.N.J. May 11, 2011) (citing
Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, LLC, 202 F.R.D. 418, 423 (E.D. Pa.
2001)).

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As a threshold matter the Court notes the following: 1) Defendant was not present at the
depositions when these communications were marked as exhibits despite having been expressly
invited to attend; 2) Defendant did not request copies of JM’s production to verify privileged
documents were not being produced to Shire; 3) none of the communications at issue were
marked as privileged; and 4) an executed Joint-Defense/Community-of-Interest Agreement has
not been presented to the Court and the Court assumes that one does not exist. These
communications are not shared between two attorneys as required by Teleglobe thus ending the
inquiry as to whether such an exception applies. 493 F.3d at 365, 372.
The Court has reviewed these documents in camera and makes the following findings:
A. JM00312981
The Court finds that this is not a communication between privileged persons but instead
an email sent from a non-attorney representative to another non-attorney who subsequently
shared its contents with JM’s in-house patent counsel William Youngblood (“Youngblood”). The
mere inclusion of an attorney on a communication does not make it privileged. This is not work
product because it was not written by an attorney revealing the preparation of a client’s case nor
does the Court find it to be an informal evaluation of the case written by Defendant’s agent.
B. JM00313705
The Court finds that this is not a communication between privileged persons for the
purpose of obtaining or providing legal advice. This is an email from Youngblood to a nonattorney representative of Defendant’s parent company – this is not an attorney-client
relationship. This document is not work product because it does not contain legal analysis or

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informal evaluation of the case. Rather it is a request to review and execute a confidentiality
agreement.1
C. JM00313069-75
The Court notes that JM00313070-75 are not part of Defendant’s motion and finds that
JM00313069 is not a communication protected by the privilege. It is not a communication
between privileged persons to obtain legal advice. It is authored by a non-attorney representative
of JM to a representative of Defendant’s parent company that also copies Defendant’s outside
counsel and Youngblood. Similarly this is not work product because it does not contain a legal
analysis nor is it sensitive preparatory work the rule is designed to protect.
D. JM00312995-96
The Court notes that JM00312996 is an unexecuted document and finds that
JM00312995 is not a privileged communication because it is not made between privileged
persons nor is its purpose to obtain legal advice. Rather this is an email authored by Youngblood
to Defendant’s outside counsel that is copied to a non-attorney third party. The Court finds that
this is not work product because it is not a legal analysis.
E. JM00313395-97
Here, the Court reviewed a chain of emails between various attorneys at JM and
Defendant’s outside counsel. As noted at the beginning of this Opinion the Court assumes that a
Joint-Defense/Community-of-Interest agreement does not exist. The Court finds that this is not
subject to the attorney-client privilege because it is not a communication between privileged
persons for the purpose of providing legal assistance. The first email in this chain of messages is
authored by a non-attorney representative of Defendant’s outside counsel to JM’s in-house patent
counsel. Nevertheless the presence of a third party waives the privilege. Teleglobe Commc’ns
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Defendants have not produced an executed agreement.

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Corp. 493 F.3d at 361. This is not work product because it is written by a non-attorney and does
not provide an informal evaluation of the case that, under the circumstance, should be protected.
IV.

Conclusion
For the reasons set forth above, the undersigned hereby denies Defendant’s application.
An appropriate order shall follow.

s/ Cathy L. Waldor
CATHY L. WALDOR
UNITED STATES MAGISTRATE JUDGE

Dated: April 1, 2014

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