Brigham Young University et al v. Pfizer et al

Filing 645

MEMORANDUM DECISION granting in part and denying in part 545 Plaintiffs Motion to Compel Documents Submitted for In Camera Review. Signed by Judge Ted Stewart on 6/23/2011. (ce)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
BRIGHAM YOUNG UNIVERSITY, a Utah
Non-Profit Education Institution; and Dr.
DANIEL L. SIMMONS, an individual ,

MEMORANDUM DECISION AND ORDER
GRANTING IN PART PLAINTIFFS’
MOTION TO COMPEL DOCUMENTS
SUBMITTED FOR IN CAMERA REVIEW

Plaintiffs,
v.
Case No. 2:06-cv-890 TS
PFIZER, INC., a Delaware corporation; G.D.
SEARLE & COMPANY, a Delaware
corporation; G.D. SEARLE LLC, a Delaware
limited liability company; MONSANTO
COMPANY, a Delaware corporation; and
PHARMACIA CORPORATION, a Delaware
corporation,
Defendants.

Chief District Judge Ted Stewart
Magistrate Judge Brooke Wells

Before the Court is Plaintiffs’ Brigham Young University and Dr. Daniel L. Simmons
Motion to Compel Production of Invention Disclosure Statements, Draft Patent Applications and
Communications with New Monsanto. 1 On April 7, 2011, the Court heard argument concerning
certain matters including issues surrounding Plaintiffs’ motion. At the hearing Plaintiffs and
Defendants (Pfizer, Inc.) each submitted documents they claim are privileged to the Court for in
camera review. The parties also filed additional briefing regarding the issues surrounding these
documents. 2 The Court has reviewed the documents submitted for in camera review, the
parties’ memoranda and relevant case law. Having done so, the Court now enters the following

1

Docket no. 545.

2

Docket nos. 589, 601 and 606.

order GRANTING IN PART Plaintiffs’ motion to compel production of the documents
submitted by Pfizer for in camera review. 3
The Court finds it unnecessary to give a detailed background of the dispute between the
parties as this has been set forth in prior orders. Suffice it to say, the parties have a disagreement
concerning the creation of Celebrex and other Cox-2 drugs.
The instant dispute centers on the production of correspondence “exchanged between
Pfizer and New Monsanto relating to document production.” 4 Defendants argue Plaintiffs’
request for these “Communications” should be denied for three reasons. First, the
“Communications are neither relevant to this proceeding nor reasonably calculated to lead to the
discovery of admissible evidence as they do not bear on any issue that is or may be relevant to
claims asserted in this litigation.” 5 Second, Defendants assert that the Communications “took
place well beyond the Court Ordered discovery cut-off of May 8, 2001.” 6 And, third, the
Communications are protected from discovery “under the common interest doctrine.” 7
In addition to submitting the Communications for in camera review, Defendants also
prepared a privilege log of the Communications to assist the Court in its review. The Court
appreciates Defendants’ efforts, but it is concerned by the fact that several entries under the
description list “No document included.” 8 Thus, it appears Defendants made a relevancy
determination without allowing the Court to review certain documents in an in camera review
setting requested by the parties. The Court disagrees with this approach. In an effort to ensure
3

The Court notes that previously the parties resolved many issues within Plaintiffs’ motion. This order only
pertains to those documents submitted for in camera review by Defendants following the hearing held in April.

4

Def.s’ stmt in sup. in camera submission p. 2, docket no. 589.

5

Id.

6

Id.

7

Id.

8

See e.g., nos. 1, 2 and 47.

2

full disclosure the Court HEREBY ORDERS Defendants to provide those missing documents
to BYU within fifteen days from the date of this order if they fit within the confines of the order
as outlined below. Or, provide them to the Court for in camera review within ten days from the
date of this order. If they are not relevant, as Defendants allege, then the Court will not order
them produced to Plaintiffs. The Court now turns to address each of Defendants’ arguments
regarding the other Communications that were submitted for in camera review.
A. Relevancy of the Communications
Defendants first assert the Communications are not relevant. “While the scope of
discovery is broad, it has ultimate and necessary boundaries.” 9 According to Defendants,
Plaintiffs’ request for the Communications “is intended to disclose information pertaining only to
Defendants’ document collection and investigative efforts” 10 and not anything concerning the
issues, claims and defenses in the lawsuit.
In contrast, Plaintiffs assert that the Communications may lead to discoverable evidence
and that Plaintiffs cannot determine whether the Communications are relevant until they see
them. Plaintiffs then cite to examples of other instances where Pfizer has allegedly failed to
produce relevant information.
The Court does not agree in toto with either of the parties’ arguments. Upon review of
the documents the Court finds that some are relevant especially when viewed at this stage of the
litigation where pursuant to rule 26(b)(1) of the Federal Rules of Civil Procedure, “Parties may
obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or

9

Id. at p. 4.

10

Id.

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defense.” 11 Further, the Court finds that many of the Communications may lead to relevant
evidence, which may have yet to be produced in this case.
But, BYU’s assertion that a party cannot determine relevance until they see documents is
overbroad. 12 Such an argument could be made in each case before every Federal Court in the
nation and when carried to its logical extension, would create an unworkable system where each
party is required to produce millions of documents to the other side so they can determine
relevance. Such “fishing expeditions” are not allowed by the rules and should not be undertaken
in hopes of finding a “smoking gun.” 13 The discovery system inherently requires the good faith
efforts of all parties to make some determinations of relevance before producing discovery.
As set forth below the Court concludes that some of the Communications should be
produced under the broad “relevancy standard” at this point in the case. 14
B. The May 8, 2001 Discovery Cut-Off
Previously, this Court granted Defendants’ motion for a protective order regarding post2001 documents. 15 The Court ordered that “neither party must produce non-damages related
documents dated after May 8, 2001.” 16 In the same order the Court created exceptions to this
cut-off date including: “any relevant responsive documents that Defendants—or entities which

11

Fed.R.Civ.P. 26(b)(1) (2011).

12

See e.g., Regan-Touchy v. Walgreen Co., 526 F.3d 641, 648-49 (10th Cir. 2008) (noting that “’the requirements of
Rule 26(b)(1) that the material sought in discovery be ‘relevant’ should be firmly applied, and the district courts
should not neglect their power to restrict discovery [to protect] ‘a party or person from annoyance, embarrassment,
[or] oppression . . . .’”) ((quoting Herbert v. Lando, 441 U.S. 153, 177 (1979) (quoting Fed.R.Civ.P. 26(b)(1),
(c)(1))).
13

See Desai v. Panguitch Main Street, Inc., 2009 WL 2957959 *2 (D. Utah Sept. 9, 2009) (“Plaintiff may discover
information that is relevant to his claim for employment discrimination; he may not, however, conduct a fishing
expedition at Defendants' offices in the hopes that he will find the proverbial smoking gun.”).
14

See e.g., Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978); Gohler v. Wood, 162 F.R.D. 691, 695
(D.Utah 1995).

15

Order dated June 23, 2010, docket no. 437.

16

Id. at p. 11.

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Defendants control—are withholding” 17; items collected by Pfizer from its Chesterfield,
Missouri facility; and pleadings, deposition transcripts, exhibits or other materials from other
relevant litigation.
The Court finds that the Communications at issue here fall within one of these
exceptions: “any relevant responsive documents that Defendants—or entities which Defendants
control—are withholding” because some of the Communications concern the search for relevant
documents that at one time may have been, perhaps even unintentionally, withheld or not
produced. 18
Accordingly, the Court disagrees with Defendants and does not find its May 8, 2001 cutoff date applicable to the Communications.
C. Common Interest Doctrine
Finally, Defendants argue the Communications, which were exchanged primarily
between Pfizer and New Monsanto, are protected under the common interest doctrine. As noted
by Defendants, “the common interest doctrine operates to shield waiver of the attorney-client
privilege when ‘disclosure of confidential information is made to a third party who shares a
community of interest with the represented party.’” 19
Plaintiffs disagree, arguing that Pfizer has failed to meet its burden of demonstrating an
identical interest between Pfizer and New Monsanto because: 1) the Court has already ruled that
the “who, what, where and when questions are factual in nature and are to be answered” 20; 2)
Pfizer has failed to identify any express agreement with New Monsanto to jointly defend this

17

Id.

18

The Court is not finding that Defendants withheld the documents that are the subject of the Communications.

19

Def.s’ stmt in sup. in camera submission p. 5.

20

Order dated July 21, 2009 p. 4, dkt no. 282.

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case; 3) Pfizer has failed to submit sworn testimony and declarations describing the basis for its
privilege; and 4) New Monsanto is not a party in this case because New Monsanto has separate
counsel who has not appeared in this case and New Monsanto has not answered BYU’s
Complaint.
As a general rule, disclosure of work product confidences to third parties waives work
product protection. 21 The common interest doctrine, however, “normally operates as a shield to
preclude waiver of the attorney-client privilege when a disclosure of confidential information is
made to a third party who shares a community of interest with the represented party.” 22 “A
community of interest exists where different persons or entities ‘have an identical legal interest
with respect to the subject matter of a communication between an attorney and a client
concerning legal advice.... The key consideration is that the nature of the interest be identical,
not similar and be legal not solely commercial’” 23
Here, although Pfizer need not make the heightened showing BYU advances, 24 the Court
concludes that under these circumstances New Monsanto and Pfizer do not share a community of
interest. The key consideration is that the nature of the interest must be identical, not similar.
The fact that there is some overlap of a commercial interest concerning the creation of Cox-2
drugs does not establish a legal interest. New Monsanto is not a party to this case, the
Communications are not “legal” in nature and there is no evidence of a “coordinated legal
21

See In re Sealed Case, 29 F.3d 715, 719 (D.C.Cir.1994).

22

Frontier Refining, Inc. v. Gorman-Rupp Co., Inc., 136 F.3d 695, 705 (10th Cir.1998).

23

NL Indus. Inc. v. Commercial Union Ins. Co., 144 F.R.D. 225, 230-31 (D.N.J.1992) (internal citations omitted)
(emphasis added) (quoting Duplan Corp . Deering Milliken Inc., 397 F.Supp. 1146, 1172 (S.D.S.C. 1974) (cited in
Frontier Refining, Inc., 136 F.3d at 705)).
24

See e.g., White v. Graceland College Ctr., 586 F.Supp. 2d 1250, 1267-68 (D.Kan. 2008) (setting forth how the
party asserting work product immunity or attorney-client privilege can meet the burden of establishing that they
apply); see also Bogosian v. Gulf Oil Corp. 738 F.2d 587, 595-96 (3rd Cir. 1984) (stating that while extensive in
camera examination of documents should not be undertaken by district courts, sometimes it is necessary for
documents that fall within alleged work product protection).

6

strategy” 25 between New Monsanto and Pfizer. Further, New Monsanto has never been a party
to this case, does not share counsel with Pfizer and does not appear to exercise any type of
control over the proceedings in this action. 26
Accordingly, the Court concludes the community of interest doctrine does not shield the
Communications from being discoverable.
ORDER
Based upon the foregoing the Court GRANTS Plaintiffs’ MOTION IN PART and
HEREBY ORDERS the following:
1. Defendants are to produce to BYU within 15 days from the date of this order the
documents set forth in the privilege log as numbers 1, 2 and 47 if they fit within the
confines of this order, or provide these documents to the Court within ten days from
the entry of this order for in camera review.
2. Defendants are to produce within 15 days from the date of this order to Plaintiffs the
remaining Communications numbers 3-46 and 48-81 as set forth in the privilege log
except for the following numbers:
-

45 which are copies of FedEx labels and irrelevant

-

25

25 because the Court finds this is irrelevant

73 and 74 which contain personal information that is irrelevant

Shamis v. Ambassador Factors Corp., 34 F.Supp.2d 879, 893 (S.D.N.Y. 1999).

26

See e.g., North River Ins. Co. v. Columbia Casualty Co., 1995 WL 5792 *5 (S.D.N.Y.) (concluding the common
interest doctrine did not apply because the parties were not represented by the same counsel, one party did not
contribute to the other’s legal expenses or exercise control over the litigation and there was no evidence of a
coordinated legal strategy).

7

IT IS SO ORDERED dated this 23 June 2011.

Brooke C. Wells
United States Magistrate Judge

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