Special Master Decision on Privilege and 30(b)(6) Preparation

A recent special master decision from the District of Delaware provides guidance on two common discovery topics: the assertion of privilege and adequate preparation of a Rule 30(b)(6) witness. Special Master Terrell first explained that the “common legal interest” privilege was not applicable because the defendant did not adequately identify another party with which it shared a common interest merely by identifying an “unnamed possible joint venture.” Merck Sharp & Dohme Corp. v. Xellia Pharmaceuticals ApS, et al., C.A. No. 14-199-RGA, Special Master Or. at 4 (D. Del. Feb. 20, 2015). The Special Master also found that communications with foreign attorneys were not privileged and should be produced because “the law in this Court does not recognize the attorney client privilege protection for a foreign attorney, unless there is the involvement of a United States attorney, where the subject generally concerns a United States patent. [The defendant] willingly introduced this patent challenge in the U.S. by filing its ‘Paragraph IV certification’ concerning the ‘300 patent at issue in this lawsuit. Thus, the ‘touch base’ test [identified in some case law] is applicable.” Id. at 4-5.

The plaintiff also complained that the defendant’s 30(b)(6) witness was not adequately prepared for three noticed deposition topics: the decision to file a Paragraph IV certification, attempts to design-around the patent-in-suit, and analysis and investigation of the patent-in-suit. The Special Master concluded that the witness “was properly prepared and gave sufficient testimony in response to the Deposition Notice. . . . Some of the topics in the Deposition Notice overlap and it appears [the witness] gave extensive testimony relevant to the ‘300 patent. With respect to [the decision to file a Paragraph IV certification], testimony need not be given as to the specific legal advice in connection with the filing of the Paragraph IV certification. As to the factual basis for this filing, [the witness] testified about that under other Topics. [Furthermore,] it is not surprising that there would be some documents, particularly aged documents, as to which [the witness] would have no knowledge. On balance, I am satisfied that [the witness] was the appropriate witness for the Deposition Notice, made reasonable efforts to prepare, and gave testimony where she had relevant knowledge.” Id. at 6-7.

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