United States District Court, District of Columbia
MICHAEL HARVEY UNITED STATES MAGISTRATE JUDGE.
seven years ago, the Federal Trade Commission
(“FTC”) petitioned this Court for an order
instructing Boehringer Ingelheim Pharmaceuticals, Inc.
(“Boehringer”) to comply with a subpoena to
produce documents for an ongoing FTC investigation. Following
a decision from this Court, an appeal to and remand from the
D.C. Circuit, and another decision from this Court consistent
with the D.C. Circuit's guidance, Boehringer now moves to
stay the Court's most recent Order “until all
appeals, including any appeal to the United States Supreme
Court, have been resolved.” Resp. Mot. [Dkt. 109] at 2.
Boehringer's Motion to Stay Production of Privileged
Documents Pending Appeal is now ripe for adjudication. Based
on a review of the relevant submis-sions and for the
reasons set out below, Boehringer's motion for a stay is
relevant facts underlying these proceedings are more fully
described in the Court's prior opinions and in the
decision of the Court of Appeals. See FTC v. Boehringer
Ingelheim Pharmaceuticals, Inc., 286 F.R.D. 101, 104-06
(D.D.C. 2012) (“Boehringer I”),
aff'd in part, rev'd in part,
and remanded, 778 F.3d 142 (D.C. Cir. 2015); FTC
v. Boehringer Ingelheim Pharmaceuticals, Inc., 778 F.3d
142, 146-48 (D.C. Cir. 2015) (“Boehringer
II”); FTC v. Boehringer Ingelheim
Pharmaceuticals, Inc., 180 F.Supp.3d 1, 6-16 (D.D.C.
2016) (“Boehringer III”). The Court will
provide only the important background information here.
Boehringer-Barr Litigation and the FTC Subpoena
filed this action to enforce an administrative subpoena
duces tecum directed at Boehringer for an FTC
investigation of a settlement agreement in a patent lawsuit
between Boehringer and a generic drug manufacturer, Barr
Laboratories (“Barr”). See Memorandum in
Support of Petition to Enforce Subpoena [Dkt. 1-4] at 1-2.
The FTC hopes to learn whether Boehringer and Barr violated
antitrust laws. Id. In the subpoena, the FTC seeks
documents from Boehringer relating to the patent litigation,
the settlement of that litigation, and other agreements
between Boehringer and Barr entered into at the time of
settlement. Id. at 5-6.
summarize, Barr developed generic versions of two drugs that
Boehringer manufactures, Aggrenox and Mirapex, and Boehringer
sued Barr for patent infringement. See Boehringer
Ingel-heim Int'l GmbH v. Barr Labs., 562 F.Supp.2d
619, 622 (D. Del. 2008), rev'd 592 F.3d 1340
(Fed. Cir. 2010). After Boehringer lost at trial but won on
appeal before the Federal Circuit, the parties agreed to
settle the case and submitted their settlement to the FTC.
See Boehringer I, 286 F.R.D. at 105. During the
course of the lawsuit, Marla S. Persky, the Senior Vice
President and General Counsel of Boehringer, helped advise
her client on the settlement agreement. Id.
the settlement, the FTC opened a formal investigation to
determine whether Boehringer and Barr had engaged in unfair
methods of competition through their settlement and other
agreements. Id. The FTC was specifically concerned
that Barr agreed to delay marketing its generic drugs,
thereby giving Boehringer a monopoly on profits for a time,
in exchange for a payoff from Boehringer using those sales.
Id. To aid in its investigation, the FTC served a
subpoena on Boerhringer for documents concerning: (1) the
patent litigation; (2) sales, profits, and marketing of the
brand-name drugs; (3) the settlement agreement; (4)
co-marketing with Barr and other firms; (5) Barr's
marketing of the generics; and (6) analyst reports on the
Boehringer I and II
Boehringer reported that it had fully complied with the
subpoena, the FTC filed an objection, noting that Boehringer
had withheld many relevant documents under claims of
work-product protection and attorney-client privilege.
Id. at 106. The FTC identified four categories of
documents that it believes Boehringer improperly withheld:
(1) financial analyses of a co-promotion agreement between
Boehringer and Barr regarding Aggrenox; (2) forecasting
analyses of possible timelines for Barr's generic drug to
enter the market; (3) financial analyses of the business
terms of the settlement agreement; and (4) notes taken by
business executives. Id. at 108. The FTC argued that
it had “an overriding and compelling need” for
disclosure of these documents and that the attorney-client
privilege did not apply to them because they were
“business documents that had no attorney as an author
or recipient, or included an attorney only as part of a
distribution to business executives.” Id. In
response, Boehringer provided a sample set of documents for
the Court to review in camera and also submitted
in camera and ex parte affidavits from
attorney Persky and attorney Pamela Taylor, who represents
Boehringer in the FTC investigation. Id. at 109.
examining those documents, this Court issued a decision
sustaining in part and overruling in part Boehringer's
assertions of privilege. With respect to the financial
analyses of a co-promotion agreement between Boehringer and
Barr on Aggrenox, forecasting analyses regarding Barr's
generic drug, and financial analyses used to evaluate the
settlement agreement, the Court concluded that these
documents were “an integral part of the
litigation” and that information used to assess
settlement options “clearly falls within the ambit of
the work product doctrine.” Id. Further, the
Court determined that these documents constituted opinion
work product, which enjoys stricter protection than fact work
product, and that the FTC could not discover them.
Id. at 110. The Court also examined a number of
emails, notes, and correspondence regarding strategic
decisions and settlement options, concluding that they were
protected as opinion work product. Id. Finally, the
Court examined a number of emails reflecting requests for
legal advice or conveying requests from attorneys for
information to be used in settlement negotiations.
Id. at 111. Though not protected by the work-product
doctrine, the Court determined that these communications were
shielded from disclosure by attorney-client privilege.
then appealed this Court's decision with respect to the
financial analyses of the co-promotion agreement, the
forecasting analyses regarding Barr's generic drug, and
the financial analyses used to evaluate the settlement
agreement. Boehringer II, 778 F.3d at 147. The D.C.
Circuit affirmed the Court's finding that the
co-promotion agreement was prepared “in anticipation of
litigation” and agreed that the vast majority of the
co-promotion materials qualified as work product, but
reversed the Court's decision with respect to a small
body of co-promotion documents prepared after the settlement
agreement was executed - a temporal distinction which this
Court failed to address. Id. at 146. The D.C.
Circuit also reversed this Court's decision on the issue
of whether these documents were fact or opinion work product,
finding that this Court incorrectly “implied that an
attorney's mere request for a document was sufficient to
warrant opinion work product protection” and noting
that the FTC had already demonstrated the requisite
substantial need to discover the documents under the
fact-work-product standard. Id. at 152, 157-58.
Accordingly, the D.C. Circuit remanded the matter for further
consideration of how many of the documents constituted fact
work product that should be produced to the FTC. Id.
at 158. The D.C. Circuit also observed that, “[t]o the
extent that any such documents were withheld in whole or in
part on the alternative basis of attorney-client privilege,
the District Court will have to determine whether this
privilege independently bars discovery.” Id.
the D.C. Circuit's decision, Boehringer filed a petition
for a rehearing en banc, arguing that the original
three-judge panel erred in its interpretation of work-product
protection. See Petition for Rehearing En
Banc, Boehringer II, 778 F.3d 142 (D.C. Cir.
2015) (No. 12-5393). After the D.C. Circuit denied
Boehringer's petition for a rehearing en banc,
Boehringer filed a motion to stay the proceedings before the
D.C. Circuit remanded the matter, arguing that the
Circuit's decision created a circuit split that required
Supreme Court review and that a refusal to grant a stay may
result in Boehringer producing documents later determined to
be protected work product. See Motion to Stay
Mandate, Boehringer II, 778 F.3d 142 (D.C. Cir.
2015) (No. 12-5393). In a brief per curiam order,
the Court of Appeals denied Boehringer's request for a
stay. Shortly thereafter, Boehringer appealed the D.C.
Circuit Court's underlying decision to the Supreme Court,
arguing again that it created a circuit split, an erroneously
strict standard for what constitutes opinion work product,
and an erroneously lax standard for what constitutes
substantial need for discovery of fact work product.
See Petition for Writ of Certiorari, Boehringer
Ingelheim Pharmaceuticals, Inc. v. FTC, 136 S.Ct. 925
(2016) (No. 15-560), 2015 WL 6668470. The Supreme Court
denied Boehringer's petition, bringing the matter back to
this Court. See Boehringer, 136 S.Ct. 925 (2016).