Advice of counsel defense to inequitable conduct results in a privilege waiver
Brigham and Women’s Hospital, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., Civil Action No.08-464-SLR, March 31, 2010.
Bartle, C.J. Defendants’ motion for an order finding that plaintiffs have waived the attorney-client privilege is granted.
The patents-in-suit pertain to the pharmaceutical compound cinacalcet hydrochloride, which is used for treating secondary hyperparathyroidism and hypercalcemia, diseases common in patients on dialysis for chronic renal failure. Defendants maintain that plaintiffs engaged in inequitable conduct during the prosecution of the patents-in-suit when they failed to cite to the respective patent examiners the then pending related application in order to extend unlawfully the patent terms of the patents-in-suit. Plaintiffs objected to discovery regarding their failure to disclose the application on the ground that such information is protected by the attorney-client privilege. Defendants contend that plaintiffs have waived the attorney-client privilege as a result of certain discovery responses, which demonstrate a relationship between an inventor and his counsel in which counsel instructed the inventor regarding his duty to disclose material information to the PTO. The Court notes that although the Federal Circuit has not decided whether an assertion of advice of counsel as a defense to the intent prong of inequitable conduct will result in a waiver of attorney-client privilege, it has done so in the context of a claim of willful infringement. In such cases, a litigant who asserts reliance of the advice of counsel as a defense waives the attorney-client privilege with regard to all communications pertaining to that advice. Defendants are therefore permitted to discover all information regarding this issue and may redepose certain individuals to elicit information previously withheld on the ground of attorney-client privilege if necessary.
