Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

• Email This
• Print
• Trackbacks

Abbott Labs. v. Andrx Pharms., Inc., No. 05 C 1490, 2007 WL 551551 (N.D. Ill. Feb. 20, 2007) (Brown, Mag. J.).*

The Court denied defendant's motion to compel production of attorney-client privileged documents pursuant to the crime-fraud exception.  Defendant argued that plaintiff's failure to disclose full results from two studies with conflicting results (for and against the applications' claims) to the USPTO, both of which were material to the claims, was both inequitable conduct and fraud.  The studies were conducted during the pendency of one application and prior to two others.  Additionally, three of the named inventors co-authored a journal article detailing the results.  And during her deposition, prosecution counsel admitted being aware of the studies during prosecution of the applications.  The Court held that the evidence warranted in camera review of selected documents from plaintiff's privilege log to determine whether there was evidence of intent.  But after its review, the Court found no direct evidence of intent to defraud the USPTO.  The Court noted that "[n]one of the documents . . . contained a 'smoking gun' or anything close to it."  Furthermore, while intent can be inferred based upon circumstantial evidence, there most be more evidence than failure to disclose to support the inference. 

* You can see more on this case, in particular, various preliminary injunction opinions here and here.

• Email This
• Print
• Trackbacks

Abbott Labs. v. Andrx Pharm., Inc., No. 06-1101, __ F.3d __ (Fed. Cir. 2007).

While this is not a Northern District case, it is relevant to the Blog because it is an appeal of a Northern District case and because it confirms Judge Coar's ruling (discussed here) that a preliminary injunction holding lacked preclusive effect in the related case Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 3718025 (N.D. Ill. Dec. 15, 2006).  In this patent dispute plaintiff, Abbott Laboratories ("Abbott"), alleged that defendant's, Andrx Pharmacueticals ("Andrx") sale of a generic form of Abbott's patented extended release antibiotic (clarithromycin, an erythromycin derivative) which Abbott markets as Biaxin XL.  The Northern District held that Abbott had established a likelihood of success on the merits of its infringement claim and that Andrx had not established a likelihood that the patent would be held invalid.  As a result of those holdings, the Northern District issued a preliminary injunction.  In its appeal, Andrx argued that Abbott was precluded from obtaining a preliminary injunction because the Federal Circuit overturned a previous Northern District preliminary injunction for Abbott against another generic antibiotic producer Teva Pharmaceuticals ("Teva").  In that case, the Federal Circuit held that Teva raised a substantial question as to the validity of the claims at issue, sufficient to call Abbott's likelihood of success on the merits into question. 

The Federal Circuit, applying Seventh Circuit law, held that preliminary injunctions would be given preclusive effect only in the "rare instances" that the injunction raised an "insuperable obstacle" to plaintiff's success on the merits.  Because the Court did not find an insuperable obstacle to Abbott's success on the merits, the denial of a preliminary injunction against Teva had no preclusive effect in this case.  As a result, the Federal Circuit upheld the Northern District's preliminary injunction.

The Federal Circuit's reasoning appears to square with Judge Coar's reasoning in the Sandoz case.  In Sandoz, the Court held that preliminary relief holdings have no preclusive effect because they are made on an incomplete record, "inherently tentative" and based upon only "an estimate of the likelihood of success."  Despite the fact that the Federal Circuit's denial of the preliminary injunction lacked preclusive effect, however, the Court ultimately refused to reach a holding inconsistent with the Federal Circuit's without a "substantial showing" on a more complete record.  So, although the Court denied the TRO, it appeared to remain open to a preliminary injunction based upon a more complete record.

You can find more on the Federal Circuit's Andrx case at Patently-O and the Patent Docs.

• Email This
• Print
• Trackbacks

Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

There are several useful practice tips to draw from this case. First:  fax cover sheets that do not contain separately privileged information are generally not privileged themselves. Of course, there are exceptions and nuances to this general rule, but I suspect that many litigators claim privilege over coversheets that have no more information on them than what must be included in the privilege log anyway. In this case, the remainder of the fax was a marked-up copy of a patent application at issue in the case, but the cover sheet made no mention of the substance or title of the included document and, therefore, the cover sheet itself was not privileged.

At the beginning of my career a wise attorney  -- David Callahan of Kirkland & Ellis -- told me that privilege logs should be reviewed by at least two attorneys before they are finalized. He also drilled into me that you should never simply push the task of logging privileged documents to the youngest associate on a case. Privilege decisions are complicated and the ramifications from privilege log mistakes can be very serious. As the youngest associate on all of my cases at the time, I was thrilled by his sage advice, and I have become more convinced of it over time.

The final practice tip:  you must make all of your arguments. Attorneys tend to focus their arguments only on either the attorney-client privilege or the work product privilege, excluding the other. In this case, Abbott alleged that the document was protected by both work product and attorney-client privilege, but did not bother proving that the document was work product. The Court noted that waiver of attorney-client privilege does not automatically waive work product protection, and did not address work product protection because Abbott had not made its case as to work product.

• Email This
• Print
• Trackbacks (1)