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.