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Baxter International, Inc. v. Becton Dickinson and Co.

United States District Court, N.D. Illinois, Eastern Division

July 26, 2019

BAXTER INTERNATIONAL, INC., Plaintiff,
v.
BECTON, DICKINSON AND COMPANY, Defendant.

          Lefkow District Judge.

          MEMORANDUM OPINION AND ORDER

          SIDNEY I. SCHENKIER UNITED STATES MAGISTRATE JUDGE.

         In this patent infringement case, plaintiff Baxter International, Inc. ("Baxter") has filed a motion to compel defendant Becton, Dickinson and Company ("BD") to (1) provide a more detailed privilege log that identifies the specific subject matter of documents withheld or redacted in response to Baxter's first set of document requests; (2) produce documents (and reveal portions of documents) that have been withheld or redacted based on an assertion of common interest privilege; and (3) designate and produce a witness to testify about Rule 30(b)(6) topics concerning BD's patent/product clearance practices and policies (doc. # 132: Pl.'s Revised 3d Mot. to Compel, at l).[1] The parties' dispute involves the discovery of information that may be relevant to a charge of willful infringement, which Baxter was required to add to its complaint by July 17, 2019 (doc. # 99). The motion has been fully briefed. Our ruling on the motion is set forth below.

         I.

         We begin with Baxter's request for more detail from BD's privilege log. In February 2018, Baxter served its first set of document requests, which includes requests seeking the production of "[d]ocuments sufficient to determine [BD's] first knowledge or awareness of any of the Patents-in-Suit" and "documents concerning [BD's] knowledge or awareness of any of the Patents-in-Suit" (Pl.'s Revised 3d Mot. to Compel, at 2).[2] Baxter contends that this set of document requests seeks documents "relating to BD's knowledge of the Patents-in-Suit, patent/product clearance policies, and any patent searches or opinions" (Id. at 2-3).

         On November 7, 2018, BD served a privilege log to Baxter. Baxter asserted that BD's log was deficient in several respects, and the parties discussed the issue at a November 14, 2018 motion hearing before the district judge (doc. # 129-7: Pl.'s Ex. G, 11/14/18 Hr'g Tr., at 2:3-3:19, 4:8-5:21, 6:24-7:18). The district judge ordered BD to provide a supplemental privilege log and complete its production of discovery relating to willful infringement by December 7, 2018 (Id. at 8:1-5; docs. ## 89, 99). Prior to the December 7th deadline, however, the district judge stayed the case pending the outcome of three inter partes review ("IPR") petitions filed before the Patent Trial and Appeal Board (doc. # 94). Due to the stay, BD did not provide a supplemental privilege log or complete its willful infringement discovery production by December 7, 2018. On March 28, 2019-after all three IPR petitions had been denied-the district judge lifted the stay (docs. ## 97, 98), and in an April 9, 2019 order, she directed BD to "produce[] discovery and privilege log agreed to and Ordered by the Court in Docket No. 89 and at 11/14/2018 hearing" by April 26, 2019 (doc. #99).

         On April 26, 2019, BD served a supplemental privilege and redaction log (doc. # 129-2: Pl.'s Ex. B). The log contains 407 entries: 155 entries for withheld documents and 252 entries for redactions. BD asserted attorney-client privilege for every entry except two; for these two entries, which are "[l]etter[s] re Monterey IP Diligence" (Privilege Log Entries Nos. 29 and 30), BD asserted no attorney-client, work product, or other privilege. BD also asserted the common interest privilege for 265 entries, and work product for two entries.

         Baxter was again unsatisfied with BD's privilege log, and on May 2, 2019, Baxter asked BD for supplementation "to disclose whether any [log] entries reference or relate to the Patents-in-Suit, including the applications on which they are based" (doc. # 129-3: Pl.'s Ex. C).[3] In response, BD asserted that Baxter's request appeared to "ask[] for the content of privileged communications" (doc. # 129-5: Pl.'s Ex. E). On June 6, 2019, the parties met and conferred regarding the privilege log dispute raised in Baxter's May 2nd email but were unable to resolve the dispute.

         Baxter contends that BD's April 26th supplemental privilege and redaction log uses generic, boilerplate language that "fails to provide any meaningful description of the documents [BD] has redacted and withheld from production" (Pl.'s Revised 3d Mot. to Compel, at 5, ll).[4]This, according to Baxter, precludes it from evaluating BD's assertions of privilege (Id. at 5, 11-12). Baxter asks that BD be required to supplement its privilege log "to provide a detailed description of each withheld document and redaction, including specifically identifying whether the listed documents and redactions reference or relate to the Patents-in-Suif (Id. at 12 (emphasis in original)).

         As an initial matter, we decline to order BD to provide a more detailed description for every one of its 407 privilege log entries. As we explain in our "Privilege Logs" case procedure entry (found on the court's home webpage), "the meet and confer requirements of Local Rule 37.2 apply to privilege disputes, just as they do to other discovery disputes." https://www.ilnd.uscourts.gov/judge-info.aspx?EBclBxz8ceU= (last visited July 22, 2019). Here, there is no indication that the parties discussed anything about BD's log entry descriptions at the parties' June 6th meet and confer other than BD's failure to identify the patents that are referred to in the log entries. Indeed, the May 2nd email from Baxter that touched off the relevant meet and confer process only sought, in pertinent part, supplementation "to disclose whether any entries reference or relate to the Patents-in-Suit, including the applications on which they are based" (Pl.'s Ex. C). It did not request that BD supplement its privilege log to provide other, additional information for every log entry, or even for the exemplary log entry descriptions identified in Baxter's motion (Id.). And by failing to respond to or otherwise challenge BD's contention that the parties have not met and conferred about issues regarding BD's log entry descriptions beyond the identification of the patents at issue, Baxter implicitly concedes that these issues are not properly before us at this time (see doc. # 135: Def.'s Opp'n to Pl.'s Revised 3d Mot. to Compel, at 6; doc. # 143: Pl.'s Reply, at 2-5).[5]

         Thus, in this decision, we do not express a view regarding the adequacy of BD's privilege log descriptions other than to determine if BD must identify, by patent number, the patents-in-suit referred to by the withheld documents and redactions listed on its April 26th supplemental privilege and redaction log.[6] On this point, BD contends that Baxter's request for the disclosure of any patents-in-suit referred to by the logged documents and redactions is improper because (1) it asks for the substance of documents or communications protected by the attorney-client privilege;[7] (2) it seeks information that will not help Baxter evaluate BD's claims of privilege; and (3) it is contrary to the position Baxter has taken with its own privilege log (Def.'s Opp'n to Pl.'s Revised 3d Mot. to Compel, at 3-6). We find BD's arguments unpersuasive.

         First, BD has not shown that the identity of a patent discussed or analyzed in an otherwise-privileged document is itself information protected by the attorney-client privilege. See United States v. Evans, 113 F.3d 1457, 1461 (7th Cir. 1997) ("The party seeking to invoke the [attorney-client] privilege bears the burden of proving all of its essential elements").[8] To the contrary, BD (tacitly) acknowledges the non-privileged nature of this information by arguing that "the number of the patent at issue (if any) in a log entry does not determine whether the document is privileged" (Def.'s Opp'n to Pl.'s Revised 3d Mot. to Compel, at 4). In fact, BD goes even further by contending that whether a communication is about a particular patent "is completely irrelevant to whether the communication is privileged" (Id. at 5 (emphasis added)). BD cannot have it both ways: the identification of a patent cannot be information that is privileged and, at the same time, be information that is "completely irrelevant" to the question of privilege.

         Square D Co. v. E.I. Electronics, Inc., 264 F.R.D. 385 (N.D. 111. 2009), cited by BD, does not convince us otherwise. In Square Z), the court found that questions asked at a deposition- some of which asked the witness to identify the patents for which the defendant had obtained legal opinions-were "objectionable because they attempt[ed] to ascertain, via the back door," the substance of those opinions by linking the product changes the defendant may have made to the opinions at issue. Id. at 392-93. Here, though, identifying a particular patent in a log entry does not disclose the substance of the legal advice contained in the logged document or redaction any more than does describing the document or redaction as concerning "Patent Advice," "Patent Prosecution," "Patent Strategy," or "legal advice re patent analysis" ~ which BD has already done (See, e.g., Pl.'s Ex. B, at 2, 13). We agree with Baxter (Pl.'s Reply, at 3) that this information merely discloses the subject matter of the document, and not the substance of it. Disclosing the fact that a document or redaction concerns "patent no. X, XXX, XXX" does not, for example, disclose anything about what (if anything) the author of that document opined concerning infringement or validity. Indeed, such a disclosure does not even identify the patent-related issue to which any communicated legal advice or information relates.

         Our conclusion is reinforced by the fact that the circumstances surrounding an accused infringer's discovery of a patent "are not in themselves protected by the attorney-client privilege[.]" Vasudevan Software, Inc. v. IBM Corp., No. C 09-05897 RS (PSG), 2011 WL 1599646, at *2 (N.D. Cal. Apr. 27, 2011) (internal quotations omitted). This is true even if an accused infringer first becomes aware of a patent through its attorney; the mere existence of a patent is a fact, and facts do "not become privileged just because they are communicated to or by a lawyer." See Intervet, Inc. v. Merial Ltd, 256 F.R.D. 229, 232-33 (D.D.C. 2009) (requiring the accused infringer to identify the person who first discovered the patent-in-suit and to "describe the circumstances under which the discovery was made, including, if applicable, that the patent was discovered by an attorney"); see also Rhone-Poulenc Rorer Inc. v. Home Indent. Co., 32 F.3d 851, 864 (3d Cir. 1994) ("Facts are discoverable[.] ... A litigant cannot shield from discovery the knowledge it possessed by claiming it has been communicated to a lawyer; nor can a litigant refuse to disclose facts simply because that information came from a lawyer").

         The information sought by Baxter may shed light on the circumstances surrounding when BD first became aware of the patents-in-suit. For instance, if BD sent or received an email referring to a patent-in-suit on a particular date, that would evidence BD's awareness of that patent as of that date. This is factual, non-privileged information that is relevant to establishing a claim for willful infringement, which requires "[k]nowledge of the patent alleged to be willfully infringed[.]" See WBIP, LLC v. Kohler Co.,829 F.3d 1317, 1341 (Fed. Cir. 2016); see also Halo Elecs., Inc. v. Pulse Elecs., Inc.,136 S.Ct. 1923, 1933 (2016) (in discussing willful infringement, noting that "culpability is generally measured against the knowledge of the actor at the time of the challenged conduct"). And, recall that the assertion of privilege here seeks to shield from production documents responsive to Baxter's request for "documents concerning [BD's] knowledge or awareness of any of the Patents-in-Suit." That information may confirm or contradict BD's interrogatory responses about when and how it became ...


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