CR Bard v. Medical Components
Filing
268
MEMORANDUM DECISION AND ORDER denying Defendant's Short-Form Motion to Compel the Production of Documents 219 . Signed by Magistrate Judge Daphne A. Oberg on 12/10/20. (dla)
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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION
C.R. BARD, INC., and BARD
PERIPHERAL VASCULAR, INC.,
Plaintiffs,
v.
MEDICAL COMPONENTS, INC.,
Defendant.
MEMORANDUM DECISION AND
ORDER DENYING DEFENDANT’S
SHORT-FORM MOTION TO COMPEL
THE PRODUCTION OF DOCUMENTS
(DOC. NO. 219)
Case No. 2:12-cv-00032-RJS-DAO
Judge Robert J. Shelby
Magistrate Judge Daphne A. Oberg
Before the court is Defendant Medical Components, Inc.’s (“MedComp”) Short-Form
Motion to Compel the Production of Documents (“Mot.,” Doc. No. 219) from Plaintiffs C.R.
Bard, Inc. (“C.R. Bard”) and Bard Peripheral Vascular, Inc. (collectively, “Bard”). The court
held a hearing on this motion on November 16, 2020. (Doc. No. 225.) After considering the
arguments of the parties and upon review of the briefs and their accompanying exhibits, the court
DENIES the motion for the reasons set forth below.
BACKGROUND
The parties are currently involved in extensive, multi-action, patent litigation. 1 In 2012,
C.R. Bard 2 initiated this action (“Port I”) against MedComp alleging MedComp was infringing
three patents which C.R. Bard owned by assignment: the ’022 patent; the ’302 patent; and the
’615 patent. (Am. Compl., Doc. No. 69.) MedComp filed counterclaims against Bard, alleging
1
The court presumes an understanding of the relevant factual and procedural background and
does not repeat it here except as otherwise relevant to this order.
2
Bard Peripheral Vascular, Inc., was later added as co-plaintiff pursuant to the court’s order on
MedComp’s Motion for Joinder of Parties. (Order Den. Mot. to Substitute Party and Granting
Mot. for Joinder of Parties, Doc. No. 149.)
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invalidity of C.R. Bard’s three patents, non-infringement of the patents in suit, and that Bard was
infringing MedComp’s patent, the ‘324 patent. (Am. Countercl., Doc. No. 208.) In addition to
Port I, Bard is involved in patent litigation in the District of Delaware, C.R. Bard, Inc. & Bard
Peripheral Vascular, Inc. v. AngioDynamics, Inc., Case No. 1:15-cv-00218 (“Port II”), which
involves patents in the same family as those at issue here. (Order Concerning Produc. of Elec.
Stored and Hard Copy Info. (“Production Order”) 1, Doc. No. 191.) Lastly, Bard and MedComp
are also litigating issues involving the same patent family before Judge Nielson in the District of
Utah, C.R. Bard, Inc. v. Medical Components, Inc., 2:17-cv-00754 (“Port III”). (Id.)
The parties have engaged in extensive discovery, including “hundreds of Requests for
Production” and the production of more than 3.6 million pages of documents in Port III. (Id.)
Further, Bard produced more than 2.3 million pages of documents in Port II. (Mot. Ex. A 6,
Doc. No. 219-1). At issue here is approximately fifty-four patent committee documents listed in
MedComp’s Exhibit A (the “disputed documents”), which Bard clawed back in this litigation.
(Id. at 2–4; Mot. 2, Doc. No. 219.)
MedComp seeks to compel Bard to produce the disputed documents because, it argues,
Bard produced these documents multiple times in all three lawsuits. (Mot. 2, Doc. No. 219.)
MedComp claims the multiple productions stand as evidence that Bard failed to take reasonable
measures to protect against disclosure of the documents. (Id. at 2–3.) As such, according to
MedComp, Bard can no longer claim the disclosures were inadvertent. (Id.) Bard admits the
documents were produced once—in Port II—but claims it was an inadvertent disclosure. (Bard’s
Opp’n to MedComp’s Short Form Mot. to Compel the Prod. of Documents (“Opp’n”) 1–2 & n.2,
Doc. No. 222.) Bard disputes any of the documents at issue here were produced in Port III and
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claims the documents were only reproduced in Port I because the court ordered Bard to do so.
(Id.)
DISCUSSION
Rule 502 of the Federal Rules of Evidence provides the disclosure of privileged
information does not constitute a waiver of privilege if: “(1) the disclosure is inadvertent; (2) the
holder of the privilege or protection took reasonable steps to prevent disclosure; and (3) the
holder promptly took reasonable steps to rectify the error, including (if applicable) following
Federal Rule of Civil Procedure 26(b)(5)(B).” Fed. R. Evid. 502(b). The party claiming the
disclosure was inadvertent has the burden to prove these elements. Hatfield v. Cottages on 78th
Cmty. Ass’n, No. 2:19-cv-00964, 2020 U.S. Dist. LEXIS 72117, at *9 (D. Utah Apr. 23, 2020)
(unpublished). When analyzing these issues, a court should consider “the overriding issues of
fairness and fair play.” United States v. Basic Research, LLC, No. 2:09-cv-00972, 2010 U.S.
Dist. LEXIS 155541, at *5 (D. Utah Mar. 17, 2010) (unpublished).
Underpinning Rule 502 is the “widespread complaint that litigation costs necessary to
protect against waiver of attorney-client privilege or work product have become prohibitive due
to the concern that any disclosure (however innocent or minimal) will operate as a subject matter
waiver of all protected communications or information.” Fed. R. Evid. 502 advisory committee’s
note. As the rule’s advisory committee explained, “[t]his concern is especially troubling in cases
involving electronic discovery.” Id.; see also Hopson v. Mayor & City Counsel of Baltimore,
232 F.R.D. 228, 244 (D. Md. 2005) (finding that insisting on “record-by-record pre-production
privilege review, on pain of subject matter waiver, would impose upon parties costs of
production that bear no proportionality to what is at stake in the litigation,” especially where
electronic discovery can involve millions of documents).
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A. Disclosures
In its motion, MedComp argues Bard cannot claw back the patent committee documents
because Bard already produced them several times—in Port II, Port III, and now in Port I.
(Mot. 2, Doc. No. 219.) MedComp, citing its Exhibit A, suggests Bard previously produced,
and then clawed back, the disputed documents in 2018 in the Port III action. (Id.) And now,
Bard seeks to do the same in Port I, and separately, in Port II. (Id.) In other words, MedComp
alleges three disclosures of these documents. (Id.) However, at the hearing on its motion,
MedComp indicated that only some of the same documents at issue here were also at issue in
Port III. (Hr’g Tr. 5:12–19, Doc. No. 255.) And MedComp conceded the privilege issue
pending in Port III is different. (Id. at 6:4–10.) For its part, Bard contends none of the
documents at issue here were clawed back previously (before June 2020). (Id. at 18:7–15,
19:13–20.)
It is not clear from the record before the court that any of the same documents at issue in
this motion were separately produced and then clawed back in the Port III litigation. Although
MedComp’s Exhibits B through E contain emails regarding two prior claw backs and other
discovery disputes, there is no indication the documents referred to are the disputed documents
at issue here. What MedComp’s Exhibit A does establish is that the same documents were
produced and clawed back in both the Port I and Port II litigation. Exhibit A contains two June
2020 emails from Bard’s counsel pertaining to the claw backs in Port I and Port II, subsequent
to the court’s Production Order. (Mot. Ex. A, Doc. No. 219-1.) Because nothing in the record
before the court establishes the same disputed documents were produced in Port III, the court
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considers only that the disputed documents were produced once in Port II, and then reproduced
in Port I.
B. Inadvertence
“Courts have not established a bright-line rule for determining whether a document was
inadvertently produced; instead, courts look at the circumstances surrounding the disclosure.”
Braun v. Medtronic Sofamor Danek, Inc., No. 2:10-cv-01283, 2013 U.S. Dist. LEXIS 145477, at
*8–9 (D. Utah Oct. 7, 2013) (unpublished) (quoting Judson Atkinson Candies, Inc. v. Latini–
Hohberger Dhimantec, 529 F.3d 371, 388 (7th Cir. 2008)). MedComp argues Bard’s multiple
disclosures of the disputed documents in this case cannot be viewed as inadvertent. However,
the critical disclosure occurred in Port II. Although this disclosure occurred as part of the
discovery production, it was not discovered until June 2020—after the Port II trial—because the
opposing party in Port II never tried to use the disputed documents. (See Hr’g Tr. 12:17–21,
Doc. No. 255; Mot. Ex. A 6, Doc. No. 219-1.) MedComp’s Exhibit A 3 includes an email from
June 15, 2020, from Bard’s Port II counsel explaining the disputed documents were “reviewed
and inadvertently produced.” (Mot. Ex. A 5–7, Doc. No. 219-1.) In the email, Bard’s Port II
counsel explained the disputed documents were “designated privileged by the vendor managing
the privilege review. However, an e-discovery staff member subsequently mistakenly added
[them] to a production set.” (Id. at 6; see also Hr’g Tr. 23:5–10, Doc. No. 255.) Bard’s assertion
that this was an inadvertent mistake is supported by the fact that the disputed documents were
3
Also reproduced as Bard’s Exhibit 1. (Opp’n Ex. 1, Doc. No. 222-1.)
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produced without any confidentiality label, while many other patent committee documents were
listed on the Port II privilege log. (Hr’g Tr. 22:15–23:1, Doc. No. 255.)
Bard then reproduced its Port II disclosure in Port I as required by the Production Order,
where the court ordered Bard to reproduce all Port II discovery within fourteen days.
(Production Order 3, Doc. No. 191.) The order did not give Bard discretion to produce only
some documents; it ordered a blanket reproduction. (Id.) The disputed documents were
necessarily included in this reproduction. Importantly, at the time of the reproduction, Bard was
not yet aware privileged documents had been disclosed in Port II—and were being redisclosed
pursuant to the Production Order. (Mot. Ex. A 6–7. Doc. No. 219-1; see also Hr’g Tr. 22:12–19,
Doc. No. 255.) Also significant is the fact that Bard’s counsel in Port I is different from its
counsel in Port II. (Hr’g Tr. 22:12–14, Doc. No. 255.)
This factual background shows Bard’s disclosure of the disputed documents in Port II
was inadvertent. And Bard’s disclosure of the disputed documents in this litigation, Port I, arose
entirely from the Production Order, which Bard complied with before becoming aware of its
inadvertent disclosure of the disputed documents in Port II. Thus, it was also inadvertent. It
would not have been possible for Bard to review all 2.3 million pages it reproduced in this
litigation in the two-week period allotted for reproduction of the Port II discovery. And where
Bard was unaware it had produced privileged material in Port II, it had no reason to request
additional time. Moreover, requiring an additional, full privilege review of millions of pages of
documents, which had previously been reviewed, would be contrary to the very purpose of Rule
502.
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C. Reasonable Steps to Prevent Disclosure
Given the circumstances outlined above, it was reasonable for Bard to reproduce Port II’s
documents without a subsequent review, particularly where the Port II production had been
reviewed for privilege by a hired vendor and Bard was unaware of the disclosure of the
disputed documents at the time of the reproduction. At the hearing on this motion, MedComp
argued Bard was made aware of privilege issues regarding its production in the Port III case in
April or May 2018—and that because some of the same documents had been produced in Port
II, Bard was on notice of the need to review its production in Port II as of that date. (Hr’g Tr.
17:2–18, 29:4–19, Doc. No. 255.) According to MedComp, a review of the Port II production
at that time would have prevented the disclosure of privileged material in Port I.
This connection is too attenuated. It is unreasonable to expect Bard to review millions of
pages produced in Port II simply because an inadvertent disclosure of approximately ninety
privileged documents was discovered in Port III 4 and some of the documents in the two cases
overlapped. Even if such an extensive action could have prevented the inadvertent disclosure
of the fifty-four disputed documents in Port I, in light of proportionality principles, Bard did not
act unreasonably in declining to undertake an independent review of millions of pages of
documents in a separate litigation upon learning of a small, inadvertent disclosure in a case
See Short Form Disc. Mot. for Determination that ESI Docs. Need Not be Returned 2, Port III
Doc. No. 117; Order Den. Pls.’ Short Form Mot. to Compel Return of Inadvertently Produced
Privileged Docs. (ECF No. 116) and Den. Def.’s Short Form Discovery Mot. for Determination
that ESI Docs. Need Not be Returned (ECF No. 117) ¶ 2, Port III Doc. No. 142.
4
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involving some of the same documents. In the unique circumstances of this case, Bard took
reasonable steps to prevent disclosure.
D. Prompt Steps to Rectify the Error
Lastly, Bard promptly took steps to rectify the error. Due to the large production size in
Port II, and the fact that the disputed documents were not used as deposition or trial exhibits in
that litigation, (Mot. Exhibit A 6, Doc. No. 219-1), it is reasonable that Bard first discovered
the disclosure when MedComp filed its June 9, 2020 surreply in Port III. (Opp’n 1, Doc. No.
222.) Promptly after the filing of MedComp’s surreply, 5 Bard investigated, counsel for Port II
and Port I consulted, and Bard clawed back the documents in both cases. (Mot. Ex. A, Doc.
No. 219-1; Opp’n 1, Doc. No. 222; Hr’g Tr. 24:7–16, 25:21–26:6, Doc. No. 255.)
Accordingly, once Bard was aware of the disclosure, it took prompt steps to rectify the error.
CONCLUSION
For the above described reasons, Bard did not waive its claimed privilege over the
disputed documents. Accordingly, the court DENIES MedComp’s Motion to Compel the
Production of Documents (Doc. No. 219).
DATED this 10th day of December, 2020.
BY THE COURT:
______________________________
Daphne A. Oberg
United States Magistrate Judge
5
At the motion hearing, Bard’s counsel indicated it clawed back the documents within twenty
days. (Hr’g Tr. 25:21–26:6, Doc. No. 255.)
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