The opinion of the court was delivered by: Falk, U.S.M.J.
Before the Court is the motion of Plaintiff Hoffmann La-Roche, Inc. for partial reconsideration of this Court's Opinion and Order dated May 11, 2011, directing the production of documents withheld as privileged. [CM/ECF No. 90.] The motion is opposed. No oral argument was heard. Fed. R. Civ. P. 78(b). For the reasons that follow, the motion is denied.
A full recitation of the relevant facts and procedural history can be found in the Court's previous Opinion. See Hoffmann-La Roche, Inc. v. Roxane Laboratories, Inc., No. 09-6335, 2011 WL 1792791 (D.N.J. May 11, 2011); CM/ECF No. 77. Only the most relevant facts are repeated here.
This is a Hatch-Waxman patent action brought by Plaintiff Hoffmann-La Roche, Inc. ("Plaintiff" or "Roche") against Defendant Roxane Laboratories, Inc. ("Defendant" or "Roxane"), alleging infringement of United States Patent No. 5,472,949 ("the '949 patent"). The '949 patent covers the drug capecitabine, which is used in Roche's breast and colon cancer drug, Xleoda®. This Court has spent considerable time case managing this case and related Xleoda® litigation.*fn1
On May 11, 2011, this Court issued an Opinion and Order ("the Opinion") directing the production of 21 documents ("the Disputed Documents") withheld by Plaintiff as privileged.*fn2 The
Disputed Documents belong to a non-party company located in Japan, Chugai Pharmaceuticals, Inc. ("Chugai"). Chugai and Plaintiff Roche are entirely separate companies that have no control over each other's documents and witnesses.*fn3
Despite its non-party status, in June 2010, in coordination with Roche and counsel for Roche, Chugai voluntarily produced discovery in this case. Among a larger number of documents produced to Roxane were the 21 Disputed Documents.
In September 2010, Teva Pharmaceuticals, Inc., a defendant in another capecitabine ANDA case that has been consolidated with this one for discovery purposes, noticed (and alerted Roche) that the Disputed Documents had been produced only to Roxane. In late November 2010, more than two months after Roche was notified of the production, Roche requested that Roxane return the documents, contending they were privileged and had been inadvertently produced. Chugai did not attempt to intervene in the case to assert privilege in any way.
In briefing on the original motion to compel, Roche offered two alternatives for its supposed standing to assert the attorney-client privilege over Chugai's documents: (1) the "common-interest doctrine"; and/or (2) Roche's contention that, in the corporate context, the "client" for purposes of the privilege extends among and between a parent company and all of its affiliates; i.e., here, beyond Chugai to, apparently, include Roche and all other related Roche entities. See 2011 WL 1792791, at *5 (citing Pl.'s Br. at 19-20.) In turn, Roxane sought production of the Documents on no less than seven grounds, including the threshold argument that Roche lacked standing to assert privilege over Chugai's documents.
On May 11, 2011, this Court issued its Opinion, which held, inter alia:
1. Roche lacked standing to assert the privilege over Chugai's 21 documents. In particular, this Court found that the "common-interest doctrine" was inapplicable because the doctrine, as a matter of law, requires the sharing of privileged communications between attorneys, which was absent here, see 2011 WL 1792791, at *4-7 & nn. 4-8 (citing, inter alia, In re Teleglobe Commc'ns Group, 493 F.3d 345 (3d Cir. 2007));
2. Even if there was standing, which was lacking, Roche had not carried its burden of showing that Documents 1-6 were privileged communications, see 2011 WL 1792791, at *7-9 & nn. 9-12, and that ...