The opinion of the court was delivered by: WILLIAM BASSLER, District Judge
MEMORANDUM OPINION AND ORDER
Defendants Apotex, Inc. and Apotex Corp. (collectively as
"Apotex" or "Defendants") filed a motion to admit into evidence
an internal memorandum produced during discovery by plaintiffs
Daiichi Pharmaceutical Co. Ltd., and Daiichi Pharmaceutical
Corporation (collectively as "Daiichi" or "Plaintiffs").
For the reasons set forth below, Apotex's motion is granted.
It is unnecessary at this time to fully chronicle the
procedural and factual background of this case. In December 2003,
shortly after the commencement of the suit, the parties
stipulated to a protective order. "Without this protection, the
parties would be unwilling to share trade secrets regarding their
products and information regarding the inner workings of their
business." (Plaintiffs' Cert. in Support of a Stipulated
Protective Order at ¶ 5.) The Protective Order covered any
information, evidence or discovery, which, in the good faith
opinion of the providing party, "contain[ed] any trade secret or
confidential and proprietary information including . . .
research, development, manufacturing. . . ." (12-08-03 Stipulated
Protective Order ("Order") at ¶ 1.) The Protective Order did not
waive the parties' rights under the Federal Rules of Civil
Procedure or Federal Rules of Evidence. (Order at ¶ 13.)
Through the course of discovery, Defendants obtained from Plaintiffs an internal memorandum that is, according to
Defendants, "highly probative of the obviousness underlying the
'741 patent." (Defendants' Br. at 4; Katz Dec., Ex. A.) The
memorandum, Defendants' Trial Exhibit 61 ("DTX 61"), marked
confidential by Plaintiffs, is a certified English translation
from Japanese of a research report by Daiichi entitled
"Investigation of Topical Administration of Tarivid into Middle
Ear in guinea Pigs." (Katz Dec., Ex. A.) Apotex seeks to enter
DTX 61 into evidence as an admission by a party opponent under
Fed.R.Evid. 801(d)(2) or as a business record under Fed.R.Evid
803(6). Plaintiffs request that the Court preclude DTX 61 as
inadmissible hearsay because Apotex has failed to establish the
requirements of Rule 801(d)(2) or 803(6).
Pursuant to Rule 801(d)(2), admissions and adoptive admissions
by a party-opponent are admissible as non-hearsay if the
statement offered against the party is "the party's own statement
. . . [or] a statement of which the party has manifested an
adoption or belief in its truth." Fed.R.Evid. 801(d)(2)(A), (B).
"Adoption can be manifested by any appropriate means, such as
language, conduct, or silence. . . . If the statements are viewed
as the defendant's own, they constitute admissions properly
characterized as non-hearsay under Fed.R.Evid. 801(d)(2)."
Horvath v. Rimtec Corp., 102 F.Supp.2d 219, 223 (D.N.J. 2000) citing Neuman v. Rivers, 125 F.3d 315, 320 (6th Cir. 1997).
Apotex's Document Request Number 30 sought "All documents that
refer or relate to the research, development and manufacture of
Daiichi's Ofloxacin Otic Solution." (Katz Dec., Ex. C.) In
response, Daiichi provided DTX 61. The mere fact that the
document was obtained through the discovery process, however,
does not qualify it as admissible evidence. Wright, Miller &
Marcus, 8A Federal Practice & Procedure: Civil 2d § 2217 at 448
(2d 1994). Rather, admissibility is governed by the Rules of
Evidence. Apotex must show evidence sufficient to support a
finding that the statement was made by Daiichi itself or in some
representative capacity, or that Daiichi otherwise adopted the
statement as its own.
Plaintiffs contend that Apotex has failed to establish the
identity of the author of DTX 61 and has not shown that the
document was prepared by or at the behest of Daiichi or its
employees. Additionally, while Plaintiffs concede the
authenticity of the document, they argue that due to the lack of
testimony regarding DTX 61, Apotex is unable to lay a proper
foundation for admitting the evidence under Rule 801(d)(2).
(11-03-05 Trial Transcript at 162:16-18.) The Court disagrees.
First, DTX 61 is clearly labeled as a Daiichi Research Report.
While not dispositive, the listing of Daiichi's name tends to
show that the report was commissioned by or in some way belonged to Plaintiffs. In a similar vein, the Third Circuit has
construed a signature on records as constituting an adoptive
admission. See McQueeney v. Wilmington Trust Co.,
779 F.2d 916, 930 (3d Cir. 1985) (finding that if plaintiff had filled out
records himself they would come under party admissions but that
in the least plaintiff's signature on documents is an
"unequivocal adoption of the contents therein"); see also
Pillsbury Co. v. Cleaner-Brooks, 646 F.2d 1216, 1218 (8th Cir.
1981); Robinson v. Audi NSU Auto Union, 739 F.2d 1481, 1489
(10th Cir. 1984) (finding a document submitted to National
Highway Safety Traffic Administration detailing puncture
resistance of gas take was a party admission). The Daiichi name
on the title page of the report, like a signature, is suggestive
Second, the Court notes that Daiichi labeled DTX 61
"Confidential Under Protective Order." Although it is not
determinative, the demarcation supports the notion that it was
Daiichi's "good faith opinion" that document contained a "trade
secret or confidential and proprietary information." (Order at ¶
1.) The act of labeling the document was adoptive in the same
sense as a signature; it tends to show ownership.
Third, DTX 61 provides the names of the research team and lead
researcher. Apotex provided evidence that Professor Kiichi Sato,
one inventor of the '741 patent, was hired by Daiichi to take
part in or expand on the research described in DTX 61, thereby linking the study in DTX 61 to Daiichi. It also further
supports the conclusion that the research was commissioned by
Daiichi, and making it a party admission. (Defendants' Reply Br.
at 1, Ex. B, C; Sato Dep. Tr. at 89:9-90:25.)
Fourth, DTX 61 was provided as a response to Defendants'
request for documents. As previously stated, this does not render
the document admissible, however, by acquiescing to Apotex's
demand it shows Plaintiffs' belief that the document did in fact
"relate to the research, development and manufacture of Daiichi's
Ofloxacin Otic Solution." (Katz Dec., Ex. C.) see e.g.,
Nestle, Inc. v. Chester's Market, Inc., 571 F.Supp. 763, 775 n.
9 (D.Conn. 1983) rev'd on other grounds, 756 F.2d 280 (2d Cir.
1985) (finding internal memorandum produced during discovery, the
authenticity of which had not been challenged, were admissible ...