Opinion
C.A. No. 99-922 (DRD).
March 7, 2001
Kathleen H. Dooley, Esq., Drinker, Biddle Shanley, Florham Park, N.J., Joseph M. O'Malley Jr., Esq., Fitzpatrick, Cella, Harper Scinto New York, NY., Attorneys for Plaintiff/Appellee.
Arnold B. Calmann, Esq., Saiber Schlesinger Satz Goldstein, Newark, N.J., Albert E. Fey, Esq., Fish Neave, New York, NY., Attorneys for Defendant/Appellant.
OPINION
Defendant/appellant Teva Pharmaceuticals USA ("Teva") has taken an appeal to this court from an order rendered in this cause by the Hon. Susan D. Wigenton, United States Magistrate Judge, compelling Teva to produce certain documents to plaintiff/appellee Warner-Lambert Company ("Warner-Lambert") over Teva's work-product objection lodged under Federal Rule of Civil Procedure 26(b)(3). For the reasons that follow, Teva's appeal is sustained, and the order below is affirmed in part and reversed in part.
FACTUAL AND PROCEDURAL HISTORY
Teva manufactures generic pharmaceuticals. On January 15, 1999, Teva filed with the Food and Drug Administration an abbreviated new drug application for a drug formulation containing quinapril, an angiotensin converting enzyme inhibitor useful in treating hypertension. In response to Teva's application, Warner-Lambert commenced this civil action against Teva on March 2, 1999 for infringement of U.S. Patent No. 4,743,450. This patent is directed to stabilized angiotensin converting enzyme inhibitor formulations.
It is undisputed that after Warner-Lambert commenced this action, Teva's litigation counsel, Fish Neave, retained Dr. James Ayres of Oregon State University as a consultant to aid in Teva's preparation of this action for trial. Dr. Ayres has conducted certain scientific tests at Fish Neave's behest to flesh out and support Teva's noninfringement defenses.
Upon discovering that Dr. Ayres was conducting tests, Warner-Lambert requested Teva to produce all documents relating to those tests. Teva objected to this request on the ground that such documents were work product, and refused to produce the documents. After the parties were unable to work out their differences, Warner-Lambert submitted a letter to Magistrate Judge Wigenton on November 21, 2000, in which Warner-Lambert argued that the facts underlying Dr. Ayres's tests — when the tests were performed, under what conditions, by whom, and with what results — were not shielded from discovery by the work product doctrine. Warner-Lambert requested an order directing Teva to produce all documents relating to Dr. Ayres's tests, to supplement its answer to an interrogatory, and to produce a witness with knowledge of the facts underlying Dr. Ayres's tests for deposition under Federal Rule of Civil Procedure 30(b)(6).
Teva then submitted a letter to Magistrate Judge Wigenton on December 5, 2000 in opposition to Warner-Lambert's letter, in which Teva argued that all documents containing factual information relating to Dr. Ayres's tests were within the ambit of the work product doctrine as codified in Rule 26(b)(3) and therefore were shielded from discovery until such time as Teva might designate Dr. Ayres as an expert witness who would testify at trial.
Warner-Lambert then submitted a letter to Magistrate Judge Wigenton on December 7, 2000 replying to Teva's letter, in which Warner-Lambert reiterated its position that documents containing facts underlying Dr. Ayres's tests, such as test protocols, lab notebooks, and data compilations, were without the ambit of the work product doctrine as codified in Rule 26(b)(3).
Following oral argument on December 8, 2000, Magistrate Judge Wigenton entered an amended order granting Warner-Lambert's motion to compel production of Dr. Ayres's test data. The order, filed on December 28, 2000 and entered on the docket on January 2, 2001, required Teva to "produce all documents, including test protocols, lab notebooks, raw data, etc., relating to the facts underlying Dr. Ayres' experiments (not including Dr. Ayres' opinions regarding the basis or reasons for those experiments, or Dr. Ayres' subsequent reports or opinions analyzing this data) . . . ." Amended Order, 12/28/00, ¶ 1, at 2. The order further directed Teva to supplement an interrogatory and to produce a witness with knowledge of the facts underlying Dr. Ayres's tests for deposition under Rule 30(b)(6). Amended Order ¶¶ 1, 2, at 2.
Teva timely filed a notice of appeal from the amended order on January 12, 2001. Magistrate Judge Wigenton stayed the amended order on January 18, 2001 pending the outcome of this appeal.
Teva had ten days after having been served with a copy of the amended order to file its notice of appeal. Loc.R. Civ. P. 72(c)(1)(A); see Fed.R.Civ.P. 72(a). Since this period of time is shorter than eleven days long, "intermediate Saturdays, Sundays, and legal holidays shall be excluded in the computation." Fed.R.Civ.P. 6(a). Even if Teva was served with a copy of the amended order on December 29, 2000, one day after its rendition and filing on December 28, 2000 (which day must be excluded from the ten-day calculation, see Fed.R.Civ.P. 6(a)), its notice of appeal was timely filed on January 12, 2001.
STANDARD OF REVIEW
Magistrate Judge Wigenton's order compelling discovery is a nondispositive order on a pretrial matter that shall be sustained on appeal unless it is clearly erroneous or contrary to law. 28 U.S.C. § 636(b)(1)(A); Fed.R.Civ.P. 72(a); Loc.R. Civ. P. 72(c)(1); Haines v. Liggett Group Inc., 975 F.2d 81, 91 (3rd Cir. 1992); Thompson v. Keane, 1996 WL 229887, at *1 (S.D.N.Y. May 6, 1996) (reviewing under this standard a Magistrate Judge's order directing the production of documents over a claim of privilege).
DISCUSSION
It is essential to delimit the scope of Teva's appeal. Teva has objected neither in its notice of appeal nor in its appellate briefs to that portion of Magistrate Judge Wigenton's order directing Teva to supplement its answer to one of Warner-Lambert's interrogatories. Teva has thus waived this issue on appeal. Fed.R.Civ.P. 72(a); Loc.R. Civ. P. 72(c)(1)(A); see generally United Steelworkers of Am. v. New Jersey Zinc Co., 828 F.2d 1001, 1007-08 (3rd Cir. 1987). Therefore, this portion of the order shall be affirmed.
Teva's appeal presents the following questions: (i) whether documents containing facts relative to Dr. Ayres's testing fall within the ambit of the work product doctrine as codified in Federal Rule of Civil Procedure 26(b)(3); (ii) whether Teva has waived the right to invoke the protections of Rule 26(b)(3); and, (iii) whether Teva must produce a witness with knowledge of the facts underlying Dr. Ayres's tests for deposition under Rule 30(b)(6) notwithstanding the restrictions upon the deposition of certain experts imposed by Rule 26(b)(4). The first and third are pure questions of law. The second is in the first instance a mixed question of fact and law; however, Warner-Lambert and Teva do not dispute Teva's conduct, but only whether that conduct amounts to a waiver of work product protection. This too, then, is a question of law. Accordingly, it must be determined whether those portions of the order below directing to produce all documents relating to Dr. Ayres's tests and to produce a witness with knowledge of the facts underlying Dr. Ayres's tests for deposition under Rule 30(b)(6) are contrary to law.
Though Teva did object in its notice of appeal to the portion of the order requiring Teva to produce a witness with knowledge of the facts underlying Dr. Ayres's tests for deposition under Federal Rule of Civil Procedure 30(b)(6), nowhere in its principal or reply briefs does Teva make any argument in support of this objection. Ordinarily, Teva would thus be deemed to have waived this issue as well. However, since the documents containing facts relative to Dr. Ayres's tests fall in the first instance within the scope of the work product doctrine as codified in Rule 26(b)(3), and so the order must in this regard be reversed, skirting the Rule 30(b)(6) witness deposition issue and summarily affirming this portion of the order below without consideration of the countervailing proscriptions of Rule 26(b)(4) would result in an incomplete and legally inconsistent disposition of this appeal. This issue shall therefore be considered in due course.
Work-Product Doctrine as Codified in Rule 26(b)(3)
Federal Rule of Civil Procedure 26(b)(3) reads as follows:
Subject to the provisions of subdivision (b)(4) of this rule, a party may obtain discovery of documents and tangible things otherwise discoverable under subdivision (b)(1) of this rule and prepared in anticipation of litigation or for trial by or for another party or by or for that other party's representative (including the other party's attorney, consultant, surety, indemnitor, insurer, or agent) only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of the party's case and that the party is unable without undue hardship to obtain the substantial equivalent of the materials by other means. In ordering discovery of such materials when the required showing has been made, the court shall protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning the litigation.
Fed.R.Civ.P. 26(b)(3) (1937, as amended through 1993). The parties agree, and the order reflects, that Warner-Lambert is not seeking production of Fish Neave or Dr. Ayres's mental impressions, conclusion, opinions, or legal theories. Amended Order ¶ 1, at 2, quoted supra p. 3. Rather, Warner-Lambert is seeking production of documents containing facts relative to Dr. Ayres's tests. That these documents have been prepared for trial is undisputed; that these documents have been prepared by or for Dr. Ayres, Teva's consultant, is also undisputed. The documents Warner-Lambert seeks fall perfectly within the rubric of Rule 26(b)(3).
Warner-Lambert argued below and argues on appeal that scientific facts — raw data, test protocols, lab notebooks, and the like — are somehow without the definition of work product and thus without the ambit of Rule 26(b)(3). Magistrate Judge Wigenton accepted this argument and ruled that the documents containing facts underlying Dr. Ayres's tests were not work product, were not entitled to protection under Rule 26(b)(3), and had to be produced. This ruling was contrary to law.
The definition of documents and other materials entitled to work product protection under Rule 26(b)(3) encompasses factual materials. Martin v. Bally's Park Place Hotel Casino, 983 F.2d 1252, 1261 (3rd Cir. 1993). More specifically, documents containing technical or scientific factual information relevant to allegations of patent infringement — just the kind of documents at issue here — have been held to be work product under Rule 26(b)(3) where the documents were prepared by or for a party's representative in anticipation of litigation or for trial. Loctite Corp. v. Fel-Pro, Inc., 667 F.2d 577, 582 (7th Cir. 1981) ("Only where the document is primarily concerned with legal assistance does it come within [the work product doctrine]; technical information is otherwise discoverable."); Software Computer Prods. Corp. v. Haworth, Inc., 2000 WL 351411, at *4, *14 (S.D.N.Y. March 31, 2000) (holding internal engineering reports regarding competitors' keyboard mechanisms that had been produced by an employee were entitled to work product protection, as they were intended to provide information to counsel that was to provide the basis for counsel's evaluation of possible patent infringement by competitors); Phillips Elecs. N. Am. Corp. v. Universal Elecs. Inc., 892 F. Supp. 108, 110 (D.Del. 1995) (holding patent infringement investigations, tests, and analyses performed by plaintiff's employees for its in-house counsel were protected from disclosure as work product, as they had been prepared in anticipation of litigation).
There is no principled difference between test documentation generated or prepared for trial by a party's employees and test documentation generated or prepared for trial by a party's consultant. Nor is there a principled difference between test documentation generated or prepared for trial by or for a party's in-house counsel and test documentation generated or prepared for trial by or for a party's outside counsel. The documents Warner-Lambert wants Teva to produce are, in the first instance, shielded from automatic production by the work product doctrine codified in Rule 26(b)(3).
Waiver of Work Product Protection
Warner-Lambert argued below and argues on appeal that Teva has waived its right to shield the documents Warner-Lambert seeks from production under the work product doctrine codified in Rule 26(b)(3). This argument is without merit. The only facts and data Teva has thus far revealed to Warner-Lambert, in Teva's answers to Warner-Lambert's interrogatories, were facts and data produced by Teva's employees in the ordinary course of business, not in anticipation of litigation or for trial. These facts and data, therefore, were not work product, Fed.R.Civ.P. 26(b)(3), and so Teva produced them to Warner-Lambert, as it was obligated to do. By contrast, the documents containing facts relative to Dr. Ayres's tests were all prepared by or for Dr. Ayres, Teva's consultant, for trial. These documents are therefore, in the first instance, work product. It matters not that the facts and data historically generated by Teva's employees may touch on the same subject matter as the facts and data in documents relative to Dr. Ayres's tests; the former class of information was not work product, but the latter is.
Substantial Need and Undue Hardship
Documents and other potentially discoverable tangible things that qualify in the first instance for protection as work product under Rule 26(b)(3) may still be discovered by a party if the party can show it has substantial need of the materials at issue and is unable without undue hardship to obtain the substantial equivalent of the materials by other means. Fed.R.Civ.P. 26(b)(3).
Teva and Warner-Lambert argue in their briefs about whether Warner-Lambert can show substantial need and undue hardship. However, Warner-Lambert argued these points neither in its letters to nor at oral argument before Magistrate Judge Wigenton. Therefore, Warner-Lambert has waived these issues on appeal. Lithuanian Commerce Corp. v. Sara Lee Hosiery, 177 F.R.D. 205, 209, 211-12 (D.N.J. 1997).
Rule 30(b)(6) vis-a-vis _ Rule 26(b)(4)(B)
Federal Rule of Civil Procedure 30(b)(6) reads as follows:
A party may in the party's notice and in a subpoena name as the deponent of a public or private corporation or a partnership or association or governmental agency and describe with reasonable particularity the matters on which examination is requested. In that event, the organization so named shall designate one or more officers, directors, or managing agents, or other persons who consent to testify on its behalf, and may set forth, for each person designated, the matters on which the person will testify. A subpoena shall advise a non-party organization of its duty to make such a designation. The persons so designated shall testify as to matters known or reasonably available to the organization. This subdivision (b)(6) does not preclude taking a deposition by any other procedure authorized in these rules.
Fed.R.Civ.P. 30(b)(6) (1937, as amended through 1993). Magistrate Judge Wigenton directed Teva to produce a witness with knowledge of the facts underlying Dr. Ayres's tests for deposition under Rule 30(b)(6). However, this directive is, as it stands, contrary to law; for it runs afoul of the proscriptions of Rule 26(b)(4)(B), which reads as follows:
A party may, through interrogatories or by deposition, discover facts known or opinions held by an expert who has been retained or specially employed by another party in anticipation of litigation or preparation for trial and who is not expected to be called as a witness at trial, only as provided in Rule 35(b) or upon a showing of exceptional circumstances under which it is impracticable for the party seeking discovery to obtain facts or opinions on the same subject by other means.
Fed.R.Civ.P. 26(b)(4)(B) (1937, as amended through 1993).
It is unclear whom Warner-Lambert would seek to depose under Rule 30(b)(6) concerning the facts relative to Dr. Ayres's tests. It is clear, however, that Dr. Ayres is an expert retained by Teva in preparation for trial who is not at this time expected to be called as a trial witness. Thus, the deposition testimony Warner-Lambert seeks falls within the rubric of Rule 26(b)(4)(B), and Warner- Lambert would have had to make a showing of exceptional circumstances to be entitled to take such a deposition under Rules 26(b)(4)(B) and 30(b)(6). This Warner-Lambert failed to do before Magistrate Judge Wigenton.
CONCLUSION
For the foregoing reasons, those portions of Magistrate Judge Wigenton's amended order directing Teva to produce all documents relating to Dr. Ayres's tests and to produce a witness with knowledge of the facts underlying Dr. Ayres's tests for deposition under Rule 30(b)(6) are contrary to law and must be reversed. The remainder of the order shall be affirmed.
An appropriate order shall enter.
March, 2001.
__________________________________ DICKINSON R. DEBEVOISE, U.S.S.D.J.