Free Motion to Compel - District Court of Delaware - Delaware

Case 1:05-cv—00O29—JJF Document 62-7 Filed 08/31/2005 Page1 of 3
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Case 1 :05-cv—00O29—JJF Document 62-7 Filed 08/31 /2005 Page 2 of 3
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Chicago, IL 60601-9703
Re: Cephaion, Inc. etal. v. Barr Laboratories, No. 05-29-HF, U.S.D.C. Dist. Delaware
Dear Mike:
I ain writing to respond to your August 24 letter concerning the inadvertent production of
privileged documents by Cephalon and the University of Utah Research Foundation ("UURF")
to Barr.
As an initial matter, Barr apparently concedes the priviieged nature of the documents in question,
since Barr makes no argument to the contrary in its correspondence. Barr’s contention is instead A
that Cephalon and UURF’s production was not "inadvertent," but this is nothing more than an
unpersuasive attempt to avoid Paragraph 16 of the Protective Order, which explicitly governs
inadvertent production of privileged documents.
As Barr well knows, the parties entered into a protective order in this case that specifically
provides that "[i]nadvertent production of documents or information subject to the attorney-
client privilege, work product immunity, or any other applicable privilege or immunity shall not
constitute a waiver of such privi1ege(s)." See Protective Order, ‘l[ 16. This provision reflects the
parties’ clear choice to "n1oclify the otherwise applicable law concerning inadvertent disclosure
of privileged documents? See Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 2001 WL
699850, *3 (S.D. Ind. 2001) (enforcing the "clear terms of the protective order"); U.S. Fidelity
and Guaranty Co. v. Braspetro Oil Services Co., 2000 WL 744369, *4 (S.D. N.Y. 2000)
(protective order provision did not merely incorporate the caselaw standards governing
inadvertent waiver because, if it did, the provision would have no effect); Prescient Partners,
L.P. v. Fielcicrest Cannon, Inc., 1997 WL 736726, *4 (S.Di N.Y. 1997) (if the protective order
provision "applied only to documents deemed inadvertently produced under governing caselaw,
then the parties would have to brief that law for the court to determine even whether th
provision applied to a particular situation . . . {which] would contravene the provisions purpose
of protecting the parties from having to litigate inadvertent production issues"). See also VLT
Corp. v. Unitrode Corp.,194 F.R.D. 8, 19 (D. Mass. 2000) (enforcing non-waiver provision of
protective order where producing party complied with terms of the order); In re Southeast
Banking Corp. Securities and Loan Loss Reserves Litigation, 212 B.R. 386, 394 (S.D.Fla.199`/)
(same).
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Case 1 :05-cv—OOO29—JJF Document 62-7 Filed 08/31 /2005 Page 3 of 3
Michael K. Nutter, Esq.
August 29, 2005
Page 2
Moreover, even if Paragraph 16 of the Protective Order did not trump governing law regarding
inadvertent production, Cepheion and the UURF’s production was nonetheless "inztdvertent"
under the very factors set forth by Barn First, with respect to precautions taken and diligence
shown in review, as Barr is weibaware, each ofthe inadvertently produced documents falls in
sequential Bates number order from CE 114207 —~ CE 114269 (with the only gaps being
traosmittai letters that Cephalon and the UURF have determined are not privileged). In addition,
as Barr readily concedes, most of the documents were correspondence on law firm letterhead,
easily identifiable as privileged. Accordingly, this suggests that the documents in question were
designated privileged, set aside to be added to the privilege log, and then accidentally produced
to Barr. Such accidental disclosure is “inadvertent” under Delaware law. See Berg Electronics
v, Molex, Inc., 875 F. Supp, 261, 263 (D.De1, 1995) (disclosure was inadvertent where
documents were intended to be withheld, but were mistakenly produced during processing
phase). Ba.rr’s argument is equaily unpersuasive with respect to the scope ofthe inadvertent
production, given that only 52 pages were inadvertently produced out of a production exceeding
270,000 pages to date, Compare Cardiac Pacemalcers, 2001 WL, at *2 (absent protective order
provision governing inadvertent disclosure, producing 3,500 privileged pages out of e 25,000
page production would constitute waiver); Amgen, Inc. v, Hoechst Marion Roussel, Inc,, 190
F.R.D. 287, 292~93 (D. Mass. 2000) (waiver where nearly 4,000 priviieged pages of a 70,000
page production were produced). Cephalon and the UURF also notified Barr of the inadvertent
disclosure immediately when counsel was made aware of the documents during Mr- Moel1er’s
August 12, 2005 deposition, and followed up with a letter several days later.
Finally, Barr’s argument regarding "digestion" of the information in the documents is no bar to
the operation of Paragraph 16 of the Protective Order. Rather than immediately retum
documents which it apparently knew were priviieged, Barr instead not only “digest{ed§" the
information contained in the documents (See August 24 letter from M. Nutter to D. Esrick, at 2),
but sought to use many of them as exhibits during Mr. Moeiiefs deposition. Barr could have
returned the documents to counsel for Cephaion and the UURF as soon as they were discovered,
Father than "digesting" them, but did not. In any event, Paragraph 16 ofthe Protective Order
specifically contemplates that inadvertently produced documents may be digested by a party and
used at a deposition, yet still be returned later to the producing party. That is why the Order
specifically gives other parties, once alerted to the existence of inadvertently produced privileged
documents at a deposition, time to assert the privilege and seek the return ofthe documents, as
Cephalon and the UURF have done here.
Please let us know immediately in writing whether Barr intends to reconsider its position, If
Barr will not return the documents identified in my August 17, 2005 letter, we will file an
appropriate motion with the Court within seven days of receiving notification from Barr.
Very truly yours, _
Daniel M, Esriek
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