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Hoffmann-La Roche, Inc v. Roxane Laboratories


June 16, 2011


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 any privilege had been waived, see id. at *11; and

3. Even if there was standing, any privilege that once attached to Documents 7-21 had been waived through deposition testimony and their production, see 2011 WL 1792791, at *10-11 & n.13.*fn4

On May 26, 2011, Roche filed the present motion for partial reconsideration of: (1) the applicability of the common-interest doctrine; and (2) the Court's conclusion that Documents 1-6 are not privileged.


Motions for reconsideration are governed by Local Civil Rule 7.1(i). Reconsideration is an "extraordinary remedy" and is granted "very sparingly." N.L. Indus. v. Commercial Union Ins. Co., 935 F. Supp. 513, 516 (D.N.J. 1996). Because the burden on the moving party is extremely high, a motion for reconsideration will be granted only if: "(1) an intervening change in controlling law has occurred; (2) evidence not previously available has become available; or (3) it is necessary to correct a clear error of law or fact, or prevent manifest injustice." Database Am., Inc. v. Bellsouth Adver. & Publ'g Corp., 825 F. Supp. 1216, 1220 (D.N.J. 1993); see also Max's Seafood Cafe v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). Local Rule 7.1(i) does not contemplate a recapitulation of arguments considered by the Court before the original decision was rendered. See Bermingham v. Sony Corp. of Am., Inc., 820 F. Supp. 834, 856 (D.N.J. 1992), aff'd, 37 F.3d 1485 (3d Cir. 1994). In other words, a motion for reconsideration is not an mechanism to "ask the Court to rethink what it ha[s] already thought through." Oritani Sav. & Loan Ass'n v. Fidelity & Deposit Co., 744 F. Supp. 1311, 1314 (D.N.J. 1990). A court "must deny a motion that simply 'rehashes the claims already considered.'" Eye Laser Care Center, LLC v. MDTV Med. News Now, Inc., No. 07-4788, 2010 WL 2342579, at *1 (D.N.J. June 7, 2010) (quoting Russell v. Levi, No. 06-2643, 2006 WL 2355476, at *2 (D.N.J. Aug. 15, 2006)).


A. Standing

In the initial motion, Roche argued that the common-interest doctrine provided it with standing to assert privilege over non-party Chugai's documents. The argument was rejected because, as explained by the Third Circuit in In re Teleglobe Commc'ns Corp., 493 F.3d 345 (3d Cir. 2007), the doctrine requires the sharing of privileged communications between attorneys representing separate clients, and here, the Disputed Documents did not involve at least two attorneys. See 2011 WL 1792791, at *4-7 & nn. 4-8. Nevertheless, Roche contends, despite the continued absence of a second attorney, that the Court should reconsider its decision because Roxane allegedly admitted, "in connection with its motion to dismiss the Complaint due to lack of standing," that Roche and various Roche-related entities shared a common interest in the '949 patent through operation of various assignment agreements. (Pl.'s Br. 1, 3, 5-6.) Roche's argument is meritless.

The common-interest doctrine allows "attorneys representing different clients with similar legal interests to share information without having to disclose it to others." In re Teleglobe Commc'ns Corp., 493 F.3d 345, 364 (3d Cir. 2007) (emphasis added). The doctrine has two essential requirements: (1) that privileged communications be shared between attorneys; and (2) that the sharing attorneys represent separate parties with a common legal interest in the shared communication. See id. at 364. The attorney-sharing requirement is "black-letter law." Id. at 372.

Roxane's supposed concession of a common legal interest among Roche and others relating to the '949 patent has nothing whatsoever to do with the presence of a second attorney or the Court's actual Opinion. If anything, Roche's argument and Roxane's phantom admission go to the second of the doctrine's requirements -- i.e., whether Roche and Chugai had a sufficiently common legal interest in the shared communications. The first requirement, the attorney-sharing requirement, is what this Court's Opinion was based upon and what Teleglobe requires. See 2011 WL 1792791, at *5-8. Roche's argument and Roxane's alleged admission have nothing to do with the Court's Opinion and provide no basis for reconsideration. Thus, Roche's argument fails.*fn5

B. Documents 1-6*fn6

Roche also seeks reconsideration of the Court's conclusion that Documents 1-6 are not privileged. Roche argues the decision was incorrect because the Court allegedly failed to account for the fact that Roche's corporate procedures and protocols contain what amounts to a standing, implied request for legal advice that would somehow invest with privilege communications that do not involve a licensed attorney. (Pl.'s Br. 5-7.)

The Court did not overlook or fail to appreciate Roche's argument in reaching its decision. Rather, Roche's expansive and strained theory of attorney-client privilege was known, addressed at length, and rejected. See 2011 WL 1792791, at *7-9 & nn. 11-12. Roche presents no binding precedent that this Court overlooked, choosing instead to simply re-hash the same arguments that have already been made and dispensed with. Simple disagreement with the Court's decision is not a basis for reconsideration. See Eye Laser Care Center, 2010 WL 2342579, at *1.*fn7


For the above stated reasons, Plaintiff's motion for reconsideration is denied. The withheld documents shall be produced within seven calendar (7) days. An appropriate Order will be entered.

MARK FALK United States Magistrate Judge

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