Case: 1:16-cv-00651 Document #: 195 Filed: 02/08/19 Page 1 of 6 PageID #:6671
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF
`ILLINOIS EASTERN DIVISION
`
`
`HOSPIRA, INC.
`
`
`
`
`
`
`
`
`v.
`
`FRESENIUS KABI USA, LLC,
`
`
`
`
`
`
`
`
`C.A. No. 1:16-cv-00651
`C.A. No. 1:17-cv-07903
`(Consolidated)
`
`Hon. Rebecca R. Pallmeyer
`
`
`
`Plaintiff,
`
`Defendant.
`
`FRESENIUS KABI’S RESPONSE TO HOSPIRA’S LR 54.3(g) MOTION
`FOR INSTRUCTIONS
`
`Defendant Fresenius Kabi USA, LLC (“Fresenius Kabi”) has complied with its obligation
`
`under Local Rule 54.3(d)(1) to provide Plaintiff Hospira, Inc. (“Hospira”) with the “time and
`
`work records on which [Fresenius Kabi’s fees] motion will be based.” In accordance with the
`
`Rule, Fresenius Kabi’s records have been “redacted to prevent disclosure of material protected
`
`by the attorney-client privilege or work product doctrine.” L.R. 54.3(d)(1).
`
`ARGUMENT
`
`
`
`Hospira’s motion does not seek instruction but instead improperly argues the merits of
`
`Fresenius Kabi’s eventual fees motion. Hospira also mischaracterizes the history of this case,
`
`focusing on only one of the two claims eventually asserted at trial—the other claim Hospira kept
`
`in the case but never even tried to defend its validity at trial. But for the majority of the period
`
`for which Fresenius Kabi will seek fees, Hospira unreasonably kept several additional issues in
`
`the case. For example, Fresenius Kabi had to prepare contentions, expert reports, depositions,
`
`and trial strategies for multiple claims from six different patents, secondary considerations, and
`
`infringement of U.S. Patent No. 8,455,527 because Hospira unreasonably kept these issues in the
`
`
`
`
`
`

`

`Case: 1:16-cv-00651 Document #: 195 Filed: 02/08/19 Page 2 of 6 PageID #:6672
`
`case until the eve of trial. Hospira also ignores the fact that the two claims eventually asserted at
`
`trial contained many limitations in addition to the stability limitation, and Fresenius Kabi was
`
`required to present trial testimony and issue post-trial briefing to address each of them. These
`
`additional claim limitations include “ready to use,” “sealed glass container,”
`
`“dexmedetomidine…at a concentration of about 4 µg/mL,” and “a pH of about 2 to about 10.”
`
`(See D.I. 176 at 9-10.)
`
`
`
`As Hospira noted, Fresenius Kabi will not ultimately be seeking all of its attorneys’ fees.
`
`(Hospira Br. at 2.) Recognizing Hospira’s need to assess the reasonableness of Fresenius Kabi’s
`
`ultimate request, Fresenius Kabi proposed multiple ways to provide such information and still
`
`protect privilege. Local Rule 54.3(d)(1) specifically contemplates redacting time entries to
`
`protect privileged information, which is exactly what Fresenius Kabi has done. Hospira agrees
`
`that Fresenius Kabi can redact privileged time entry information. (Hospira Br. at 5.) Fresenius
`
`Kabi appreciates that Hospira must assess the reasonableness of Fresenius Kabi’s requested fees,
`
`and for that reason provided general subject matter summaries of each entry. (Hospira Br., Ex.
`
`2.2.) Hospira’s own case law holds that to support a fees motion, “[a]ttorneys, at a minimum,
`
`‘should identify the general subject matter of [their] time expenditures.’” Stragapede v. City of
`
`Evanston, 215 F. Supp. 3d 708, 719 (N.D. Ill. 2016) (quoting Hensley v. Eckerhart, 461 U.S.
`
`424, 437 n.12 (1933)); see also Duran v. Town of Cicero, No. 01-cv-6858, 2012 WL 1279903,
`
`*9 (N.D. Ill. Apr. 16, 2012) (“th[e] five-month period right before trial is unlikely to have
`
`involved much wasted time (on either side). The court is therefore inclined to be much more
`
`tolerant of time entries for this period that are lacking in specificity.”). Courts in this District
`
`have previously allowed a fees petitioner to submit “billing summaries, as opposed to the
`
`original documentation including invoices and time sheets, in support of their Petition.” See,
`
`
`
`2
`
`

`

`Case: 1:16-cv-00651 Document #: 195 Filed: 02/08/19 Page 3 of 6 PageID #:6673
`
`e.g., Abrams v. Resolution Trust Corp., No. 89-cv-3020, 1994 WL 710766, *3 (N.D. Ill. Dec. 17,
`
`1994).
`
`Hospira objected to Fresenius Kabi’s submission of billing summaries, so Fresenius Kabi
`
`agreed to provide Hospira a sampling of redacted billing entries in addition to the billing
`
`summaries to determine whether that would resolve the dispute. (Hospira Br., Ex. 5.2.) Hospira,
`
`however, maintained its objection and insisted that Fresenius Kabi waive privileged and produce
`
`most of its entries in unredacted form. There is no requirement that Fresenius Kabi choose
`
`between a reasonable request for attorneys’ fees and maintaining its attorney-client privilege.
`
`Fresenius Kabi’s disclosure provides more than enough information for Hospira to
`
`determine the reasonableness of Fresenius Kabi’s requested fees. None of the cases Hospira
`
`cites involved the present scenario, i.e. redacted time entries plus a description of the subject
`
`matter of those entries. Fresenius Kabi’s disclosure includes descriptions of the tasks performed,
`
`billing rates, the people involved in the task, and the amount of time required to perform each
`
`task. Further, Hospira’s motion only specifically objects to redactions relating to the subject
`
`matter of hearings and meetings with opposing counsel. (Hospira Br. at 4, 7.) During the
`
`parties’ January 23, 2019, meet and confer, counsel for Fresenius Kabi stated that its final L.R.
`
`54.3(d)(1) disclosure would not redact the subject matter of hearings or meetings with opposing
`
`counsel. Therefore, Hospira’s only specific objections have already been resolved by the parties.
`
`
`
`The information Fresenius Kabi redacted is particularly sensitive here because this case is
`
`presently on appeal to the Federal Circuit (No. 19-1329), and therefore could eventually be
`
`remanded to this Court for further proceedings. Without the redactions Fresenius Kabi has
`
`applied to its time entries, Fresenius Kabi risks a subject matter waiver of privileged information
`
`regarding case strategies and assessments which Fresenius Kabi may need to use before this
`
`
`
`3
`
`

`

`Case: 1:16-cv-00651 Document #: 195 Filed: 02/08/19 Page 4 of 6 PageID #:6674
`
`Court on remand. Because of this concern, Fresenius Kabi offered to defer its fees motion until
`
`after an appellate decision, but Hospira rejected this offer. (Hospira Br., Ex. 3 at 2, 12/28/18
`
`email from S. Horton.) Of course, Fresenius Kabi remains willing to defer its fees motion until
`
`after an appellate decision, at which time many of the current redactions would no longer be
`
`required.
`
`CONCLUSION
`
`
`
`Fresenius Kabi respectfully requests the Court find either its original disclosure (Hospira
`
`Br., Ex. 2.2) or its sample redacted disclosure (Hospira Br., Ex. 5.2) complies with L.R.
`
`54.3(d)(1). If the Court finds the latter, Fresenius Kabi will similarly redact the remaining time
`
`entries in support of its fees motion to complete its L.R. 54.3(d)(1) disclosure.
`
`Further, to the extent the Court resets Hospira’s deadlines in L.R. 54.3(d)(5) to 21 days
`
`from Hospira’s receipt of Fresenius Kabi’s compliant disclosure, Fresenius Kabi requests the
`
`Court also reset the deadlines in L.R. 54.3(e) (Joint Statement) and L.R. 54.3(f) (Fee Motion) to
`
`21 days and 42 days, respectively, from the date of Hospira’s L.R. 54.3(d)(5) disclosures.
`
`
`
`
`
`
`
`4
`
`

`

`Case: 1:16-cv-00651 Document #: 195 Filed: 02/08/19 Page 5 of 6 PageID #:6675
`
`Dated: February 8, 2019
`
`
`Respectfully submitted,
`/s/ Imron Aly
`
`Imron T. Aly (IL Bar No. 6369322)
`Kevin M. Nelson (IL Bar No. 6275586)
`Joel M. Wallace (IL Bar No. 6304223)
`Tara L. Kurtis (IL Bar No. 6323880)
`233 South Wacker Drive, Suite 7100
`Chicago, Illinois 60606
`(312) 258-5500
`ialy@schiffhardin.com
`knelson@schiffhardin.com
`jwallace@schiffhardin.com
`tkurtis@schiffhardin.com
`
`Ahmed M.R. Riaz (pro hac vice)
`666 Fifth Avenue, 17th Floor
`New York, NY 10103
`(212) 753-5000
`ariaz@schiffhardin.com
`
`Attorneys for Defendant Fresenius Kabi USA,
`LLC
`
`
`
`5
`
`

`

`Case: 1:16-cv-00651 Document #: 195 Filed: 02/08/19 Page 6 of 6 PageID #:6676
`
`CERTIFICATE OF SERVICE
`
`I, Tara Kurtis, an attorney at the law firm of Schiff Hardin LLP, hereby certify that on
`
`February 8, 2019, I caused a true and correct copy of the foregoing FRESENIUS KABI’S
`
`RESPONSE TO HOSPIRA’S LR 54.3(g) MOTION FOR INSTRUCTIONS to be electronically
`
`served on counsel of record via the Court’s CM/ECF system.
`
`
`
`/s/ Tara Kurtis
`Tara Kurtis
`
`
`
`
`
`
`
`