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Schering Corporation, et al v. Mylan Pharmaceuticals

August 18, 2011


The opinion of the court was delivered by: Linares, District Judge.



This matter comes before the Court by way of Defendant Mylan Pharmaceuticals, Inc.'s ("Mylan's") appeal of the June 9, 2011 Letter Order of then-Magistrate Judge Salas granting in part and denying in part Mylan's application to compel discovery based on various alleged waivers of privilege by Plaintiffs, Schering Corporation and MSP Singapore Company LLC (collectively, "Schering"). The Court has considered the submissions of the parties in support of and in opposition to the instant appeal and decides the matter without oral argument pursuant to Rule 78 of the Federal Rules of Civil Procedure. For the reasons set forth below, the ruling of the Magistrate Judge is affirmed.


In September 1993, Schering filed a patent application that led to the issuance of United States Patent No. 5,757,115 ("the '115 patent") on June 16, 1998. On June 15, 2000, Schering filed for reissue of the '115 patent, and on May 28, 2002, the patent was reissued as United States Patent No. RE37,721 ("the '721 patent").*fn1 While the privilege issues before Judge Salas concerned various events surrounding the prosecution of these patents and Schering's assertion of rights thereunder, the instant appeal focuses only on alleged instances of waiver relevant to (A) an investigation conducted by Schering in 2005 regarding the inventorship of the '721 patent, and (B) circumstances surrounding the June 2000 reissue application that led to the issuance of the '721 patent.

A. Inventorship Investigation

Mylan alleges that a former employee of Schering, the late Dr. Adriano Afonso, "intentionally withheld his name as an inventor of the '721 patent in order to promote the career of his protege, Dr. Rosenblum, who was a named inventor." (Mylan's Br. in Supp. of its Appeal from Magistrate's Order Regarding Schering's Waiver of Privilege ["Mylan's Br."] at 2.) On July 15, 2005, Dr. Afonso sent a letter to Schering's then-chief patent counsel, James Nelson, seeking to have his named included as an inventor on the '721 patent. (Id.) Mr. Nelson enlisted outside counsel, Dorothy Auth, to investigate Dr. Afonso's claims. (Id.) On November 14, 2005, Ms. Auth provided Schering with a written opinion on the issue of Dr. Afonso's inventorship, and on December 1, 2005, Ms. Auth also provided a four-page summary of her findings in a letter to Dr. Afonso. (Id. at 2--3; see Decl. of Deepro R. Mukerjee ["Mukerjee Decl."], Ex. 9.)

During discovery in the matter of Schering Corporation v. Glenmark Pharmaceuticals Inc., Civil Action No. 07-1334 (the "Glenmark litigation"), Schering produced Ms. Auth's December 1 letter, as well as a letter from Mr. Nelson to Dr. Afonso similarly referencing Ms. Auth's analysis. (Id. at 3.) Schering has also produced those documents in this case. (Id.) During the Glenmark litigation, Schering also permitted defense counsel to depose Ms. Auth regarding her inventorship investigation. (Id.) Schering further allowed defense counsel to depose Anita Magatti, Schering's in-house counsel who prosecuted the '115 and '721 patents, regarding her own investigation into the inventorship of the relevant patents. (Id.)

B. Reissue Application

In June 2000, Schering applied for reissue of the '115 patent, seeking to include "bullet claims" directed toward a specific chemical compound, ezetimibe. Mylan asserts that Ms. Magatti "deliberately excluded the bullet claims from the '115 patent and that Schering's representation to the [United States Patent and Trademark Office (USPTO)] that the omission was inadvertent was false." (Id. at 4.) During the Glenmark litigation, Schering allowed Ms. Magatti, as well as Ms. Auth and Mr. Nelson, to testify regarding Schering's failure to include the bullet claims. (Id.)

C. Judge Salas's Ruling

On October 18, 2010, Mylan filed a letter with the Court arguing that Schering's disclosures during the Glenmark litigation constituted waivers of privilege and seeking to compel the production of related documents. (Id. at 6.) On January 13, 2011, after the parties had submitted initial briefings, Judge Salas held a hearing on the matter and permitted the parties to file additional materials in support of their respective positions. (Id. at 6--7.) On April 14, 2011, Judge Salas held a second hearing, and on June 9, 2011, she issued a Letter Order granting in part and denying in part Mylan's application to compel. (Docket Entry No. 207.) On June 15, 2011, a corresponding Oral Opinion was issued. (Docket Entry No. 208.) Therein Judge Salas (1) found that the law of the Federal Circuit controlled the privilege issues in dispute, and (2) applied that law to find various instances of waiver and ordered Schering to produce related documents and communications. Thereafter, Mylan sought clarification of Judge Salas's ruling, and the parties were permitted to submit their concerns, in writing, to the Court. The parties were likewise granted an extension of the deadline to appeal. (Docket Entry No. 224.) On July 6, 2011, Judge Salas held an on-the-record telephonic conference addressing Mylan's clarification requests, (see Docket Entry No. 246), and on July 12, 2011, Mylan filed the instant appeal.


Under 28 U.S.C. § 636(b)(1)(A), a United States Magistrate Judge may hear and determine any non-dispositive pretrial matter pending before the Court. The district court will only reverse a magistrate judge's decision on these matters if it is "clearly erroneous or contrary to law." 28 U.S.C. § 636(b)(1)(A); Fed. R. Civ. P. 72(a); L. Civ. R. 72.1(c)(1)(A). Under this standard, a finding is clearly erroneous when "although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." Anderson v. Bessemer City, 470 U.S. 564, 573 (1985) (citing United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)). The district court will not reverse the magistrate judge's determination, even in circumstances where the court might have decided the matter differently. Bowen v. Parking Auth. of City of Camden, No. 00-5765, 2002 WL 1754493, at *3 ...

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