                            UNITED STATES DISTRICT COURT
                            FOR THE DISTRICT OF COLUMBIA

FEDERAL TRADE COMMISSION, :
                          :
          Petitioner,     :
                          :
          v.              :                                        Misc. Action No. 09- 564 (JMF)
                          :
BOEHRINGER INGELHEIM      :
PHARMACEUTICALS, INC.,    :
                          :
          Defendant.      :
                          :

                                  MEMORANDUM OPINION

       This matter was assigned to me for all purposes. Pending before me now is the Petition

of the Federal Trade Commission for an Order Enforcing a Subpoena Duces Tecum [#1]. 1 The

Federal Trade Commission (“FTC”) seeks an order from this Court declaring that the documents

requested in its subpoena duces tecum are not privileged under the attorney-client privilege or the

work product doctrine, as claimed by respondents, Boehringer Ingelheim Pharmaceuticals, Inc.

(“BIPI”), and requiring the respondent to turn over the documents within 10 days of this order.

In light of the record before me and for the reasons stated herein, plaintiff FTC’s petition will be

denied as to certain categories of documents as set forth below. For all others, BIPI will be

ordered to redact privileged material and disclose the rest, if it has not already done so.

I.     BACKGROUND

       The subpoena filed by the FTC is part of an investigation into a settlement agreement in a

separate, prior lawsuit between BIPI and a generic drug manufacturer, Barr Laboratories.

Memorandum in Support of Petition of the Federal Trade Commission for an Order Enforcing a

1
  The first reference to pleadings and other filings in this docket will include the name of the
document and the docket number. All subsequent references to the same document will include
the docket number only.
Subpoena Duces Tecum [#1-4] at 1-2. The investigation, in short, is looking into allegations that

BIPI and Barr engaged in unfair trade practices. Id.

       BIPI manufactures two brand-name drugs, Aggrenox and Mirapex. Id. at 4. Barr

developed generic versions of these drugs and received FDA approval to market the generic

versions, leading to litigation by BIPI alleging patent infringement. See Boehringer Ingelheim

Inter. gmbH v. Barr Labs., 562 F. Supp. 2d 619, 622 (D. Del. 2008), rev’d Boehringer Ingelheim

Intgern, gmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010). This action was consolidated

with an action these plaintiffs later brought against Mylan Laboratories (“Mylan) seeking to

enforce their rights in the Mirapex patents against Mylan. See [#1-4] at 4.

       Marla S. Persky is Senior Vice President, General Counsel, and Secretary of Boehringer

Ingelheim USA Corporation, Boehringer Ingelheim Corporation and BIPI. She attempted to

settle the lawsuit pertaining to the Mirapex litigation, but the case proceeded to trial in the

District of Delaware, where the court held that the Mirapex patents were invalid. Boehringer

Ingelheim Inter. gmbH, 562 F. Supp. 2d at 640 (D. Del. 2008). Persky’s clients pursued appeal

in the Federal Circuit. Boehringer Ingelheim Intgern, gmbH., 592 F.3d at 1340. On January 25,

2010, the Federal Circuit reversed the lower court and remanded the case to the district court. Id.

       In 2008, however, Barr and BIPI settled their disputes as to Aggrenox and Mirapex, and

submitted the settlement to the FTC and Department of Justice, as required by law. [#1-4] at 5.

The review of the settlement by the FTC led to the subpoena at issue here. The FTC opened a

formal investigation in January 2009 to determine whether, via the settlement, the two parties

had engaged in unfair methods of competition with respect to the sale of the two drugs and their

generic counterparts. Id. The agreement provided that Barr could begin to market its generic

versions only near the expiration of BIPI’s patent, and that Barr would help promote BIPI’s



                                                  2
product until it entered the market. Id. This arrangement prompted the concern of the FTC that

Barr agreed to delay marketing the generic versions of Aggrenox and Mirapex so as to allow

BIPI to reap the sole profits, and in exchange, BIPI would “kick back” a portion of those profits

to Barr. Id.

          Shortly after the FTC investigation began, a subpoena was issued to BIPI, but BIPI did

not comply with the deadline for production. [#1-4] at 5-6. Pursuant to Sections 9 and 16 of the

Federal Trade Commission Act (“FTC Act”), 15 U.S.C. §§ 49, 56, 2 on October 23, 2009, the

FTC filed this petition seeking enforcement of the subpoena. [#1]. Specifically, the FTC

requested that the Court order BIPI to comply with the subpoena and turn over all relevant

documents concerning the litigation between BIPI and Barr; sales, profits, and marketing of the

brand-name drugs; the settlement agreement; co-marketing with Barr and other firms; the

marketing of the generic substitutes by Barr; and analyst reports on the drugs. Id. at 5. Between

December 2009 and May 2010, there were disputes regarding the scope and adequacy of BIPI’s

search efforts. In May 2010, however, BIPI formally certified that it had fully complied with the

FTC subpoena. See Status Memorandum Advising the Court of New Developments [#15] at 2.

          The following month the FTC filed a status memorandum stating that BIPI’s “limited

custodial-based search did not locate all responsive materials.” Federal Trade Commission’s

Status Memorandum Advising the Court of New Developments [#17]. The FTC also objects to

BIPI’s withholding of roughly 25% of its produced documents under claims of work product and

attorney-client privilege. Id.

          During a March 8, 2011 status conference, I directed the parties to meet and confer on a

sample set of documents to be presented to me for in camera review. I have reviewed BIPI’s

privilege log as well as the sampling of documents, which were created by BIPI in the period
2
    All references to the United States Code are to the electronic versions in Westlaw and Lexis.

                                                  3
between the District Court decision on June 26, 2008 and the settlement achieved on August 11,

2008.

        The sample was chosen as representative of the 631 documents BIPI claims are

privileged. The FTC, which has not seen the documents, insists that they are not protected,

either because: 1) they are typical business forecasts not done by lawyers, and therefore not work

product, or 2) the documents contain no confidential communications between client and

attorney and do not qualify as protected by the attorney-client privilege. Status Report of the

Federal Trade Commission [#41] at 1-2. Alternatively, the FTC argues that, even if the

documents are privileged, the privilege is overridden by the FTC’s substantial need for these

documents in order to conclude its law enforcement investigation. Id. at 3.

        Finally, the FTC claims that BIPI’s eventual response to the subpoena was legally

inadequate. Id. at 12-14. The FTC alleges that BIPI failed to preserve its electronic records and,

as a result, responsive emails exist only on server back-up tapes, which BIPI refuses to search.

Id. As a result, the FTC claims BIPI “has not conducted sufficient electronic searches of certain

network folders, and instead relies on a custodian-based self-selection search process that the

evidence indicates did not uncover many responsive documents.” Id.

        Therefore, two issues remain: 1) whether the documents claimed by BIPI to be protected

under a privilege are, in fact, privileged; and 2) whether the scope and adequacy of BIPI’s search

is sufficient. I will address the former issue in this Memorandum Opinion. The latter will be

addressed in a separate, forthcoming opinion.




                                                 4
II.    LEGAL STANDARD

       A.      Application of the Federal Rules of Civil Procedure

       Under the common law, on a petition to enforce an administrative subpoena, the court’s

role is limited to evaluating whether the subpoena is for a lawful purpose, whether the documents

requested are relevant to that purpose, and whether the demand is reasonable. See FTC v.

Texaco, Inc., 555 F.2d 862, 872 (D.C. Cir. 1997) (en banc) (citing Endicott Johnson v. Perkins,

317 U.S. 501, 509 (1943) and Oklahoma Press Pub. Co. v. Walling, 327 U.S. 186, 209 (1946))

(cert. denied, 431 U.S. 974 (1977)). When the subpoenaed party is not challenging enforcement

of the subpoena itself, but rather objecting to the disclosure of specific documents under a claim

of privilege, the principles of the attorney-client privilege and the protection of work product

privilege, derived from the common law and Rule 26(b)(3)(A) of the Federal Rules of Civil

Procedure, apply. See, e.g., U.S. v. Cal. Rural Legal Assistance, Inc., 824 F. Supp. 2d 31, 43-44

(D.D.C. 2011) (noting that enforcement of an administrative subpoena from a government

agency may be limited by the federal attorney-client and work product privileges, rather than

state privileges or ad hoc determinations). “The nature of a subpoena enforcement proceeding,

under common sense and precedents in this circuit and elsewhere, thus rests soundly in federal

law, and federal law of privilege governs any restrictions on the subpoena's scope.” Linde

Thomson Langworthy Kohn & Van Dyke, P.C. v. Resolution Trust Corp., 5 F.3d 1508, 1513

(D.C. Cir. 1993).

       In general, the Federal Rules of Civil Procedure apply to “proceedings to compel . . . the

production of documents through a subpoena issued by a United States . . . agency under federal

statute.” Fed. R. Civ. P. 81(a)(5). The work product doctrine set forth in Rule 26 therefore

applies to a subpoena issued by a federal investigative agency prior to the contemplation of


                                                 5
actual litigation. That rule prevents against disclosure of “documents and tangible things

prepared in anticipation of litigation or for trial by another party or its representative.” Fed. R.

Civ. P. 26(b)(3)(A).

       Accordingly, I will address the FTC’s claims and BIPI’s assertion of privilege under the

standards of Rule 26 and interpreting case law.

       B.      The Work Product Doctrine

       “The work-product doctrine ‘provides a working attorney with a zone of privacy within

which to think, plan, weigh facts and evidence, candidly evaluate a client's case, and prepare

legal theories.” Linde, 5 F.3d at 1515, (citing Coastal States Gas Corp. v. Dep.’t of Energy, 617

F.2d 854, 864 (D.C. Cir. 1980)). It “undeniably extends to communications with ‘one employed

to assist the lawyer in the rendition of professional legal services.’” Id. at 1514 (internal

quotations omitted). The work product doctrine is therefore broader in scope than the attorney-

client privilege. Id. It protects against disclosure of not just communications, but also the

“mental impressions, conclusions, opinions, or legal theories of an attorney.” Id. See also Tax

Analysts v. Internal Revenue Serv.,117 F.3d 607, 619 (D.C. Cir. 1997).

       As I have said previously, the Rule’s emphasis on documents prepared “in anticipation of

litigation” contains two separate, yet related concepts – one temporal, the other motivational.

Willingham v. Ashcroft, 228 F.R.D. 1, 4 (D.D.C. 2005). “In reviewing documents claimed to be

protected by the work-product privilege, the court must determine ‘whether, in light of the nature

of the document or the factual situation in a particular case, the document can fairly be said to

have been prepared or obtained because of the prospect of litigation.’” Banks v. Office of Senate

Sergeant-At-Arms, 228 F.R.D. 24, 26 (D.D.C. 2005) (quoting Equal Emp’t Opportunity

Comm’n v. Lutheran Soc. Servs., 186 F.3d 959, 968 (D.C. Cir. 1999) (emphasis added)). Put



                                                   6
another way, “[t]o be protected by the work-product doctrine, a document must have been

created for use at trial or because a lawyer or party reasonably anticipated that specific litigation

would occur and prepared the document to advance the party's interest in the successful

resolution of that litigation. Motivation is key.” Banks, 228 F.R.D. at 26 (internal citations

omitted). See also United States v. Deloitte, 610 F.3d 129, 137 (D.C. Cir. 2010) (“Like most

circuits, we apply the ‘because of’ test, asking ‘whether, in light of the nature of the document

and the factual situation in the particular case, the document can fairly be said to have been

prepared or obtained because of the prospect of litigation.’”) (internal citation omitted). Yet, if

the documents in question would have been created in essentially the same form, irrespective of

litigation, “it [cannot] fairly be said that they were created ‘because of’ actual or impending

litigation.” Willingham, 228 F.R.D. at 4 (citing United States v. Adlman, 134 F.3d 1194, 1202-

03 (2d Cir. 1998)).

       If a party can show that the documents were developed because of ongoing litigation,

they are not discoverable absent the requesting party’s showing that their need for the documents

is substantial and that they are unable to obtain the substantial equivalent of the materials by

other means without suffering “undue hardship.” Dir., Office of Thrift Supervision v. Vinson &

Elkins, LLP, 124 F.3d 1304, 1307 (D.C. Cir. 1997). Even when the requesting party can meet

this burden, only “factual” work product will be disclosed; “opinion” work product, which

reveals the mental processes or impressions of an attorney or his or her agents, will still receive

the utmost protection. Upjohn Co. v. United States, 449 U.S. 383, 400 (1981); Dir., Office of

Thrift Supervision, 124 F.3d at 1307 (“Opinion work product . . . is virtually undiscoverable.”);

Nesse v. Pittman, 202 F.R.D. 344, 350 (D.D.C. 2001) (“[E]ven if the work-product privilege

yields to a showing of need, the court must still protect absolutely the “mental impressions,



                                                  7
conclusions, opinions or legal theories of an attorney.”). Where the factual and opinion work

product are so intertwined in a document that it is impossible to segregate and disclose the purely

factual part, any disclosure would violate the protections afforded by the work product doctrine

since, in that case, the entire document discloses the mental impression of an attorney or her

agent. In re Vitamins Antitrust Litig., 211 F.R.D. 1, 5 (D.D.C. 2002) (holding that if the court

were to find “that the attorney’s mental impressions are so thoroughly intertwined with factual

information that the entire memoranda should be treated as work product, the [materials] cannot

be produced.”).

       C.      Attorney-Client Privilege

       In this Circuit, the attorney-client privilege applies only to communications from a client

to an attorney made in confidence for the purpose of securing legal advice. Jinks-Umstead v.

England, 231 F.R.D. 13, 15 (D.D.C. 2005); Athridge v. Aetna Cas. & Sur. Co., 184 F.R.D. 200,

204 (D.D.C. 1998); Evans v. Atwood, 177 F.R.D. 1, 3 (D.D.C. 1997) (citing Tax Analysts, 117

F.3d at 617). The privilege also extends “to communications from attorneys to their clients if the

communications rest on confidential information obtained from the client.” Tax Analysts, 117

F.3d at 618 (internal quotations omitted). This includes communications made by employees of

a client in response to the client’s attorney’s request for information for the purposes of

rendering legal services to the client. Banks v. Office of Senate Sergeant-at-Arms, 222 F.R.D. 1,

3 (D.D.C. 2004). The attorney-client privilege and the work product doctrine often go hand-in-

hand: “Because the work-product and attorney-client privileges operate independently of each

other, the application of either will act to shield from production those documents for which both

privileges are claimed.” Nesse, 202 F.R.D. at 348. Documents that are protected by the attorney-

client privilege are thus absolutely privileged as is opinion work product. Factual work product



                                                  8
yields, however, to a showing of substantial need and the inability to secure the materials by

other means without undue hardship.


III. ANALYSIS

       The FTC takes issue with several categories of documents for which BIPI asserted claims

of privilege: 1) the financial analyses of a co-promotion agreement regarding Aggrenox; 2)

forecasting analyses of possible time lines for the generic drug to enter the market; 3) financial

analyses of the business terms of the settlement agreement; and 4) notes taken by business

executives. [#41] at 3. The FTC claims an overriding and compelling need for disclosure of

these categories. Id. It also insists that attorney-client privilege claims regarding business

documents that had no attorney as an author or recipient, or included an attorney only as part of a

distribution to business executives, must be rejected. Id.

       Having reviewed the documents in camera, I will now address the merits of BIPI’s

claims of privilege. I have sorted the different documents into four broad categories, and will

address each in turn.

       A. Analyses of Co-Promotion Agreement, Forecasting Analyses, and Financial
          Analyses Used to Evaluate Potential Settlement Options

       Many of the documents for which BIPI claims a work product privilege are described in

the privilege log using the labels in the title of this sub-section. BIPI claims that these analyses

were prepared not in the ordinary course of business, but for the specific purpose of informing

counsel whether the proposed BIPI-Barr settlement offers should be accepted. Tr. of Status

Hearing of 12/9/11 [#59] at 20. BIPI concedes that financial projections and analyses are

frequently conducted, even absent ongoing or contemplated litigation, but contends that the

specific financial analyses at issue before the Court do not fall into this category. Id. at 22.



                                                   9
Rather, says BIPI, they were specially prepared at the request of counsel in response to litigation,

and are therefore work product. Id.

       Indeed, BIPI contends that it already turned over more than 270,000 pages of documents,

including projections and financial analyses that were prepared in the ordinary course of

business. [#59] at 22; 27-28. Attorneys for BIPI further argue that, even though the analyses in

question were prepared by non-lawyers, the documents are still protected by attorney-client

privilege or the work product doctrine because the analyses were premised on frameworks

provided by Persky and were prepared for her use. Id. at 27-28. BIPI therefore requests that I

hold each of the documents provided for in camera review to be privileged, and thus, not subject

to disclosure. See Response of Boehringer Ingelheim Pharmaceuticals, Inc. to the Federal trade

Commission’s Status Report [#44] at 2.

       With regards to the analyses specific to the Aggrenox co-promotion agreement, the FTC

claims that agreement was “distinct from the settlement agreement,” [#41] at 4, meaning it was

not prepared for the BIPI-Barr litigation, and therefore cannot qualify for work product

protection because the co-promotion was not even a part of the litigation. BIPI, on the other

hand, claims that, while the co-promotion agreement was “freestanding,” in that it constituted a

separate business arrangement, the terms of the co-promotion agreement were indeed part of the

litigation settlement and the two processes informed one another. [#44] at 4. BIPI asserts that the

co-promotion agreement arose during the settlement discussions and, in fact, was part of the

settlement. Id.

       After reviewing these documents, the status reports and oppositions, and affidavits

accompanying the in camera submissions, I agree that the co-promotion agreement was an

integral part of the litigation. Hence, disclosure of the attorneys’ and their agents’ mental



                                                 10
processes qualify for protection since the process of deciding whether to settle a case is

necessarily created because of the prospect of litigation. I credit the declarations of Persky and

Pamela M. Taylor, partner at Jones Day, the firm representing BIPI in the FTC investigation, that

the various financial analyses were prepared for the client during settlement discussions and

involved discussions among the attorneys and their agents who were handling the settlement

negotiations. The documents themselves establish the truth of Persky’s claims in her affidavit

that the documents were created by BIPI or Boehringer Ingelheim employees in response to her

personal requests for financial and other information. This was information she needed in order

to provide her client, BIPI, with legal advice regarding the potential settlement between BIPI and

Barr. Information used to assess settlement option clearly falls within the ambit of the work

product doctrine. See Willingham, 228 F.R.D. at 4. Consequently, these documents are work

product and thus protected.

       Although the FTC is correct in its assertion that similar reports are prepared for BIPI

executives as a matter of regular business, the specific reports as to which BIPI claims the

privilege were prepared using information and frameworks provided by BIPI attorneys, and

constitute work product intended to aid these attorneys in the settlement process. Moreover,

BIPI insists any freestanding non-litigation-based financial analyses were already disclosed to

the FTC, meaning that the only additional information the documents at issue would yield is the

mental thought processes of BIPI’s attorneys as they prepared for settlement negotiations.

Having reviewed the documents themselves, I find that BIPI is correct—these documents were

prepared for counsel and were not business forecasts made in the ordinary course of business.




                                                 11
       B. The FTC’s Overriding and Compelling Need for the Analyses

       In the event that I found, as I just have, the various financial analyses to be work product,

the FTC argues that the documents must be disclosed due to its overriding and compelling need

for them to complete the administrative investigation. [#41] at 9-11. The documents, according

to the FTC, and the documents cannot be obtained in any other way. Id. at 10. The FTC believes

these materials are vital to the FTC’s investigation, and objects to BIPI’s use of them as both a

sword (to claim their business deal was a fair transaction) and a shield (using claims of privilege

to prevent anyone from looking into the validity of such a claim). Id. at 9-10.

       I hold that this argument fails on two accounts. First, as described above, a showing of

substantial need is not sufficient to merit disclosure of opinion work product. Having reviewed

the documents, I find that the factual inputs cannot be reasonably segregated from the analytical

outputs. Hence, a disclosure of any aspect of the financial analyses would necessarily reveal the

attorneys’ thought processes regarding the BIPI-Barr settlement. The reports in question were

prepared at the behest of BIPI attorneys, who requested that certain data be entered and

manipulated to determine whether various settlement options were beneficial to BIPI. Revealing

the data chosen for this analysis would necessarily reveal the attorneys’ mental impressions,

including, at a bare minimum, that the attorneys believed such analyses of that data was

necessary or important to determining an appropriate settlement. Where the factual work

product cannot reasonably be excised from the opinion work product, the claim of privilege must

be upheld and the request for production denied.

       Second, after reviewing these documents in camera, I cannot agree that there is an

overriding need on the side of the FTC. From my review, there are no smoking guns contained

in these documents; rather, they are the sort of financial analyses one would expect a company



                                                 12
exercising due diligence to prepare when contemplating settlement options. They yield nothing

more than the arithmetical calculations of various potential scenarios and are not in any way

evidence of any conspiratorial intent to violate the law. They also do not cast any light on the

fundamental legal issue of whether the deal was or was not anti-competitive in intendment or

result. No one is pretending that the FTC is not fully aware of the deal that was made or of the

economic benefits the deal makers were trying to achieve. The arithmetic of various potential

scenarios adds nothing to what is already known about what the involved companies intended in

settling their suit. Although I am sympathetic to the FTC’s argument that these financial

analyses are the only documents that could demonstrate whether or not BIPI was using the co-

promotion agreement to pay Barr not to compete, I am afraid that they cast no light of whether

that intendment existed. I therefore cannot find that the FTC has shown the requisite need for

this work product that is generally considered to be “virtually undiscoverable.” Dir., Office of

Thrift Supervision, 124 F.3d at1307.

       The privilege log should be sufficient to convey to the FTC the contents of the e-mails

transmitting the above-mentioned reports, and no further disclosure should be necessary. For the

purposes of ruling on the in camera submission, I have grouped these transmittal e-mails

together under Category D in the attached Appendix. If the e-mails contain additional, factual

work product that can be reasonably excised from any indication of opinion work product, as

discussed above, the e-mail may be redacted as to the latter and disclosed, if BIPI has not done

so already. If no segregation is possible, the transmittal e-mails will fall under the same privilege

that applies to the documents themselves, which are grouped in the Appendix under Category A.

       C. E-mails, Notes, and Correspondence Regarding Strategic Decisions, Settlement
          Possibilities, and Settlement Options, Including Correspondence Between
          Executives



                                                 13
       Like the above-mentioned categories of documents, the documents under this heading

represent various types of communications (including e-mails, handwritten notes, and other

correspondence) all discussing the different settlement possibilities or specific options that were

on the table for BIPI. Again, I hold that they, too, are protected by the work product doctrine

and are not subject to disclosure insofar as these documents contain the mental processes and

opinions of BIPI attorneys and their consultants.

       Some of these documents include correspondence and other materials circulated

principally between executives, rather than between attorneys and executives, for which BIPI has

claimed an attorney-client privilege. To this, the FTC objects that the attorney-client privilege or

work product doctrine cannot exist between non-attorneys. Federal Trade Commission’s Reply

Status Report [#47] at 5. BIPI claims that these documents were either prepared during

discussions with counsel or as part of the work performed at counsel’s request. [#44] at 8. It also

claims that 1) at least 76 of the 102 documents involving non-lawyers explicitly state that they

are confidential or prepared at the direction of counsel, and 2) that an additional 64 are directed

to an attorney, admittedly among other recipients, and include requests for legal advice. Id. at 11-

12. The documents themselves indicate, however, that they were intended to be confidential

communication between the client, BIPI, and its attorneys. They are thereby protected by the

work product and attorney-client privileges because they disclosed confidential communications

between attorney and client and were prepared during the settlement phase of the litigation. The

documents submitted for in camera review deserving of this protection are listed in Category B

in the Appendix.




                                                 14
       D. E-mails Reflecting Requests for Legal Advice or Conveying Requests From
          Attorneys for Information To Be Used in Settlement Negotiations

       A third category of documents encapsulated by the heading above poses a different issue

– the attorney-client privilege on its own.

       An example of the FTC’s issue with this category of documents is document #724. BIPI

asserts attorney-client privilege over this document because it reflects a request by in-house

counsel, Bruce Banks, for information that would help inform BIPI in drafting its co-promotion

agreement with Barr. Declaration of Pamela L. Taylor, submitted in camera, at 39. The FTC

takes issue with this on the grounds that the communication was between two non-lawyers, and

thus cannot be considered protected by the attorney client privilege. However, communications

among employees of a client are still afforded the protection of the privilege, so long as the

communications concern legal advice sought or received that was intended to be confidential.

See, e.g., Long v. Anderson Univ., 204 F.R.D. 129 (S.D. Ind. 2001) (e-mails between one

university employee and another regarding communications with counsel were privileged);

Johnson v. Sea-Land Serv. Inc., No. 99-civ-9161, 2001 WL 897185, at *2 (S.D.N.Y. Aug. 9,

2011) (holding that the privilege “affords confidentiality to communications among clients, their

attorneys, and the agents of both, for the purpose of seeking and rendering an opinion on law or

legal services, or assisting in some legal proceeding, so long as the communications were

intended to be, and were in fact, kept confidential.”).

       I therefore hold that all e-mails conveying a request for or the provision of legal advice

are protected by the attorney-client privilege. Out of the documents submitted for in camera

review, this would include document #1599, which was already provided in redacted form with

the privileged material excised; and document #724, described above.




                                                 15
       Some documents contain an entire string of e-mails being sent back and forth, in which

the correspondence addresses legal strategies, proffers of advice, or potential avenues for the

settlement. Document #2190 is such a chain, and as such, it is privileged in its entirety.

However, in instances where there are multiple e-mails in a single string, and only one of those

e-mails contains privileged material, the privileged component may be excised but the remainder

of the e-mail string must be disclosed. I hope that the parties will find this consistent with my

treatment of the transmittal e-mails described in section II.A, supra. For example, document

#1318 contains multiple e-mails back and forth among several groups of people, with only the

final e-mail indicating a request for legal advice. In instances such as this, only the specific e-

mail that is privileged may be withheld or redacted; the rest must be disclosed.

       Finally, there was one e-mail chain where it was unclear on its face whether BIPI’s

attorneys’ advice was sought on a confidential issue. Document #2896 is an e-mail string

concerning BIPI’s media response about the approval by the FDA of the Barr generic.

Declaration of Pamela L. Taylor, submitted in camera, at 36. In the last e-mail, Paula

Wittmayer, an attorney with BIPI’s in-house counsel, simply says: “Here were my edits to the

last version.” It is impossible to tell from the e-mail chain whether her views were sought as to a

legal issue, or whether her edits were merely typographical and grammatical. One cannot say,

therefore, that her client sought legal advice by a confidential communication. Therefore, the

claim of privilege fails as to this e-mail chain and others where confidential communication is

not intended.

       There is also a set of documents provided for my review that are duplicates or near

duplicates of other documents already provided. These documents are listed in category E in the

Appendix, and should be handled in the same manner as the documents they duplicate.



                                                  16
       I appreciate that there may be documents at issue in this case which may not fit neatly

into one of the categories described above. As the FTC noted in its recent request for a status

conference on this issue, the debate about these documents has gone on for too long. I hope to

avoid a protracted and unnecessary back-and-forth as to each of the 600-plus documents still in

question. We shall proceed as follows. BIPI should make a rolling production of non-privileged

documents at no less than 100 documents a day until the production is completed. BIPI must

disclose, in redacted form, all correspondence containing factual, rather than opinion, work

product, if it has not already done so. However, all financial analyses prepared for the BIPI-Barr

litigation, including for the Aggronex co-promotion agreement, are deemed privileged, as

discussed above, and not subject to disclosure.

        I will hold counsel for BIPI strictly to the obligation imposed by Rule 26(g) of the

Federal Rules of Civil Procedure and expect the redactions it makes to be not a word more than

is necessary to protect a privilege. If that is not done, I will sanction BIPI counsel and, at a

minimum, BIPI will forfeit its privilege to that document. If I detect a pattern of a failure to

comply with the obligations I am imposing, I will consider forfeiting the privilege as to all

remaining documents.

       I hope by doing this to provide the FTC with the gist of the document despite the

redaction being made so that it can conscientiously and reasonably decide whether any additional

battle over the document is truly necessary. Demanding a document that, even as redacted, is

innocuous and does not really advance its investigation may lead to similar consequences for the

FTC, and, again, if a pattern emerges, I will consider upholding the privilege as to all remaining

documents. I ask only that the parties be reasonable and devote only that amount of time to this

controversy that is truly proportionate to what is now at stake.



                                                  17
       If all else fails, BIPI will submit the disputed documents to me for in camera review and I

will resolve them summarily and as quickly as I can.

       My ruling as to the specific documents submitted for in camera review is set forth in the

attached Appendix.

       An Order accompanies this Memorandum Opinion.

                                                                                Digitally signed by John M. Facciola
                                                                                DN: c=US, st=DC, l=Washington,
                                                                                email=john_m._facciola@dcd.usco
                                                                                urts.gov, o=United States District
                                                                                Court for the District of Columbia,
                                                                                cn=John M. Facciola
                                                                                Date: 2012.09.27 09:12:34 -04'00'
                                                    ___________________________________
                                                    JOHN M. FACCIOLA
                                                    UNITED STATES MAGISTRATE JUDGE




                                               18
                                              APPENDIX A

                               Documents submitted for in camera review

           CATEGORY                           DOCUMENTS                         RULING
A)    Presentations and         3328           928         1947          These documents are
      documents regarding       1365           1291        233           protected by the work
      overview of               1366           1580        790 3         product and/or
      litigation, options       1367           1984        791           attorney client
      available, and/or         1368           617         2333          privilege, and are not
      estimated financial       2921           2250        2387          subject to disclosure.
      impact of various         1396           1040/1041   1057/1058
      options for               1397           1381        1004
      settlement; financial     1344           2364        992
      analyses of both the      900/901/902    810/811     2495
      co-promote                2364           832/833     2946
      agreement and             2918/2919      973         2550
      various settlement        2920/2921      1290        2578/2580
      options; summaries                                   2983/2984
      of settlement                                        3058
      discussions
B)    E-mails, notes, and       780/781        927/928     821           These documents are
      reports containing:       621            1516 4      1947          protected by the work
      • strategic decisions     574/575/576    2547        1093          product and/or
      • proposed                729            2540        3415 5        attorney client
         settlement options     1007/1008      859         1001          privilege, and are not
         and terms                             891                       subject to disclosure.
      • delegation of                          1016/1017
         responsibilities
      • analysis from
         executives,
         prepared for
         counsel,
         conveying mental
         impressions of
         counsel or strategy
         for litigation




3
  A redacted version of this document was already produced.
4
  It appears from the face of this document that it is notes taken during a conversation with an
attorney. If that is the case, and these notes reflect the contents of that conversation, the notes
would be privileged. As it is difficult to determine definitively whether or not this is the case,
with regards to this document, I instruct BIPI to supplement the privilege log to indicate where
and in what context these notes were taken.
5
  The report attached to this e-mail exchange was already produced. The e-mail itself is
privileged and does not need to be disclosed.

                                                   19
C)   Requests for legal      1599          2190           2896 6         Any emails related to
     advice or e-mails       1318          724                           requests for or the
     containing legal                                                    provision of legal
     advice or opinions                                                  advice need not be
                                                                         produced and may be
                                                                         redacted if part of a
                                                                         larger e-mail chain
                                                                         (e.g., 1318). Chains
                                                                         not containing any
                                                                         confidential
                                                                         communications
                                                                         between attorneys for
                                                                         BIPI and BIPI
                                                                         employees must be
                                                                         disclosed in full.
D)   E-mails transmitting    3327             1395         1868          BIPI should redact
     privileged              1364             616          699           opinion work
     documents, where        2917             1039         1000          product, if any, from
     the e-mail itself       3057             1308         2945          these e-mails and
     contains no little or   1343                                        disclose the rest to
     privileged material                                                 the FTC.
E)   Near duplicates of      1955, duplicating 576/1041                  Disclosure of these
     documents falling       908, duplicating 617                        near-duplicates
     into the above          1415 and 693, duplicating 859               should mirror my
     categories, for which   861duplicating 833                          holdings on the
     the FTC requested in    860, 844, and 1996 duplicating 832          original documents.
     camera review           1341, 815, 819, 1333, and 858 duplicating
                             2580




6
  This exchange was already produced with virtually all the content redacted. As discussed in
this Memorandum Opinion, however, the contents of the e-mail do not indicate whether or not
the material is protected by the attorney-client privilege, as claimed. It must therefore be
disclosed in full.

                                                  20
