D. Mass. Patent Litigation Update: May 2024

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In Enanta Pharmaceuticals Inc. v. Pfizer Inc., No. 22-10967—a case involving Enanta’s patent allegedly covering a component of Pfizer’s Paxlovid—Magistrate Judge Boal granted a motion by Pfizer to review representative documents in camera and determine whether redacted information was privileged as claimed by Enanta. After in camera review, Magistrate Judge Boal determined that (1) for documents that in this particular case do not themselves evidence that they are privileged, Enanta could file declarations supporting its privilege assertion and (2) for documents in this particular case for which the redactions contain certain factual information characterized as “process information,” the redactions in this case should be removed as the information was not privileged.

Pfizer argued that Enanta redacted several categories of documents, allegedly improperly contending that impressions of Enanta scientists, scientific discussions, slide decks, corporate goals, and company-wide emails were privileged. None of the documents on their face in this particular case included communications between an attorney and a client for the purpose of obtaining legal advice. The Court summarized caselaw addressing situations where attorney-client privilege may extend to communications between nonlegal employees. For example, communications among employees that discuss or set forth counsel’s legal advice may be privileged if the employees are in a “need to know” position or are responsible for the subject matter relating to the legal advice. Moreover, the attorney-client privilege may attach in situations where a non-legal employee discusses or transmits legal advice given by counsel and an employees discusses their intent to seek legal advice regarding an issue.

First, the Court addressed documents in this particular case that allegedly reflect attorney-client and patent agent communications regarding patent prosecution. The Court found that it was not apparent that the particular redacted information in this case was privileged, but gave Enanta two weeks to submit declarations supporting its assertions.

Next, the Court addressed documents containing, in this particular case, factual or “process information” (e.g., whether a particular patent in this case has been or will be filed). The Court found that such information in this case was not privileged and ordered Enanta to unredact such information.

Finally, the Court found that a set of documents containing redacted information is privileged.

Also in Enanta Pharmaceutical, Inc. v. Pfizer Inc., No. 22-10967, Magistrate Judge Boal addressed: (1) Pfizer’s motion to compel production of Enanta’s employment, cooperation, and consulting agreements for any witness identified in Enanta’s Rule 26 disclosures; and (2) to require export the registry showing all compounds synthesized in the so-called “3CLpro” program without regard to the date of synthesis.

First, the Court granted-in-part Pfizer’s request for employment, cooperation and consulting contracts for any witness identified in this case in Enanta’s Rule 26 disclosures. The Court ordered Enanta to produce all consulting agreements in this particular case with a named inventor and for witnesses listed in its Rule 26 disclosures. The Court denied Pfizer’s request for employment agreements generally.

The Court also compelled Enanta to produce its 3CLpro compound database. The Court rejected Enanta’s argument that the compound database would be duplicative of electronic laboratory notebook entries it had already produced, finding that Pfizer is entitled in this particular case to confirm the accuracy of Enanta’s assertion, citing examples provided by Pfizer that a number of compounds that a deponent in this particular case testified would have been recorded in the database were not found in the laboratory notebooks.

In Chr. Hansen v. Glycosyn LLC, No. 22-cv-11090, Chief Magistrate Judge Cabell granted-in-part a motion to compel several categories of documents in a case involving Glycosyn’s patents related to a process for manufacturing complex sugars. Glycosyn sought an order compelling Chr. Hansen to produce several categories of documents, including batch records, relating to bacterial strains used to produce complex sugars. Chr. Hansen argued that the burden of producing the documents would not be proportional to the needs of the case.

The Court balanced the relevance of the requested discovery with the burden of collecting and producing the documents. For documents of only marginal relevance, the Court found the discovery requests not proportional to the needs of the case and denied the motion to compel these documents. The Court also considered whether certain discovery sought went beyond the requirements of Local Rule 16.6, which requires parties accused of patent infringement to automatically produce technical documents and product samples for accused products. The Court ordered Chr. Hansen to provide the full range of discovery contemplated by Local Rule 16.6(d)(4) notwithstanding its arguments about the insufficiency of Glycosyn’s infringement contentions, to the extent these documents had not already been produced. To the extent the discovery sought went beyond the requirements of the local rule, the Court deferred ruling on the requests until a pending motion to strike was resolved, allowing Glycosyn to renew its motion following a ruling on the motion to strike.

Glycosyn also sought discovery from counterclaim defendant Abbott Laboratories, which Glycosyn alleged has a contractual right to obtain some or all of the requested documents from Chr. Hansen. The Court denied the motion to compel as to Abbott, citing to Fed. R. Civ. P. 26(b)(2)(C) and explaining that Chr. Hansen is clearly a more convenient source than Abbott given that Chr. Hansen, not Abbott, possesses the requested documents.