Judge Leonard Stark recently issued an interesting memorandum order on assertions of attorney-client privilege with respect to documents that evidence a possible breach of a confidentiality agreement. Plaintiffs Galderma Labs and Supernus Pharmaceuticals withheld certain documents from production and listed them on a privilege log. Defendants Amneal Pharmaceuticals sought to have Judge Stark compel the production of the documents in question. Judge Stark reviewed the documents in question in camera and granted the request to compel with respect to some documents, but denied it with respect to others. Galderma Labs. Inc., et al. v. Amneal Pharmas., LLC, et al., C.A. No. 11-1106-LPS, Memo. Order at 1 (D. Del. Nov. 8, 2013).
Judge Stark ordered the production of documents related to Defendants’ unclean hands and breach of contract claims. Each of these documents included one or more of the following items: (1) “litigation counsel communicating with prosecution counsel about prosecution activity” despite the fact that litigation counsel was prohibits from doing so by a defendants’ offer of confidential access and the Court’s protective order, (2) references to “prior communications between litigation counsel and prosecution counsel,” and (3) “litigation counsel being copied on communications among prosecution counsel and the client.” These items in the documents at issue made the documents relevant to Defendants’ determination of whether the offer of confidential information or the protective order was breached. Therefore, Judge Stark found that litigation counsel’s declaration denying any use of Defendants’ confidential information in patent prosecution was sufficient to waive the attorney-client privilege. Id. at 1-3.
Judge Stark, however, did not order production of documents withheld by Plaintiffs that related to Defendants’ inequitable conduct claim. After in camera review, Judge Stark explained that Defendants had not “made a prima facie showing of the applicability of the crime-fraud exception . . . [nor did] the Court find that the testimony of prosecution counsel constitutes a waiver of privilege.” Id. at 3-4.