Case 1:18-cv-12029-ADB Document 133 Filed 07/16/21 Page 1 of 4
`
`Andrea L. Martin
`amartin@burnslev.com
`617.345.3869
`
`Via ECF
`
`Honorable Allison D. Burroughs
`United States District Court Judge
`John Joseph Moakley U.S. Courthouse
`1 Courthouse Way
`Boston, Massachusetts 02210
`
`July 16, 2021
`
`Re:
`
`Teva Pharmaceuticals International GmbH et al v. Eli Lilly and Company,
`Civil Action No. 1:18-cv-12029-ADB
`
`Dear Judge Burroughs:
`
`We, along with Finnegan LLP, represent Eli Lilly and Company (“Lilly”) in the above-
`captioned matter. We write in response to the July 7, 2021 letter filed by Teva Pharmaceuticals
`International GmbH and Teva Pharmaceuticals USA, Inc. (collectively, “Teva”) (Dkt 130) seeking
`to compel corporate testimony regarding Lilly’s prior art searches relating to the Tan Thesis in
`response to Teva’s Rule 30(b)(6) Topic Nos. 1 and 2.
`
`Teva’s letter, which it rushed to file just days after the parties agreed to extend the case
`schedule to continue their efforts, inter alia, to “resolve any outstanding discovery disputes”
`(Dkt 128, ¶6), and when it knew Lilly’s offices were closed company-wide for the week,
`incorrectly seeks broad discovery including a waiver of Lilly’s privilege for its prior art searches.
`Teva omits, however, that it has:
`
`1. Rejected Lilly’s offer to present a witness on Teva’s 30(b)(6) Topic Nos. 1 and 2;
`2. Backtracked on its previous agreement that Lilly need not provide corporate testimony on
`Topic No. 2 if Lilly responded to Teva’s corresponding interrogatory on the same subject
`matter, which Lilly did; and
`3. Refused to provide any reciprocal discovery on Lilly’s Rule 30(b)(6) topic directed to the
`same subject matter, notwithstanding that Teva—not Lilly—bears the ultimate burden of
`proving IPR estoppel under 35 U.S.C. § 315(e).
`
`

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`Case 1:18-cv-12029-ADB Document 133 Filed 07/16/21 Page 2 of 4
`ECF Letter to Judge Burroughs
`July 16, 2021
`Page 2
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`Lilly has thus already offered, and Teva has declined, the discovery it now seeks. Teva’s privilege-
`waiver arguments are also foreclosed by this Court’s decision in Palomar Tech., Inc. v. MRSI Sys.,
`LLC, No. 18-10236, 2020 WL 2115625, at *4 (D. Mass. May 4, 2020). Lilly respectfully requests
`that the Court deny Teva’s letter to compel.
`
`I.
`
`Teva Is Not Entitled to Relief
`
`Teva’s request to compel corporate testimony about Lilly’s prior art searches (Topic No. 1)
`and awareness of the Tan Thesis (Topic No. 2) is belied by Teva’s rejection of Lilly’s offer to
`provide a corporate witness on that same subject matter. Ex. 1 (Lilly emails dated July 7, 2021,
`2:06 pm and 7:53 pm). Lilly conditioned its offer on Teva agreeing that the act of providing a
`corporate witness would not in itself amount to waiver of attorney-client privilege. Id. But rather
`than taking the offered discovery, Teva refused. Id. (Teva email dated July 7, 2021, 6:51 pm).
`
`Teva also omits two critical facts. First, the parties already obviated the need to raise a
`dispute to this Court by reaching agreement that Lilly need not provide a corporate witness on
`Topic No. 2 if Lilly answered Teva’s Interrogatory No. 17 concerning the same subject matter of
`the Tan Thesis. Ex. 2 (Lilly letter dated June 4, 2021) at 1 (“Teva represented that it would forego
`Rule 30(b)(6) testimony on this topic [No. 2]….”). In accordance with the parties’ agreement, Lilly
`has provided both initial and supplemental responses to that interrogatory, and Teva has identified
`no deficiencies in Lilly’s responses. It is inefficient for the parties to reach agreements during
`discovery, only for Teva to backtrack, break those agreements, and burden the Court with
`previously resolved issues. Second, Teva has refused to provide a corporate witness on this very
`same issue for this very same reason—i.e., that it has “already provided all non-privileged
`information under which it first became aware of the Tan Thesis in an interrogatory response.”
`Ex. 3 (Teva letter dated May 17, 2021) at 3; Ex. 4 at 23-24. On these bases alone, Teva’s request
`with respect to Topic No. 2 should be denied.
`
`Teva’s privilege-waiver arguments also lack merit. Regarding Lilly’s prior art searching
`(Topic No. 1), Teva argues waiver based on Lilly’s contention in response to a contention
`interrogatory that the Tan Thesis “could not have been found through a reasonably diligent search,”
`which is one of the factors this Court considers for IPR estoppel. Teva Ltr at 1-2; Teva Ex. 2 at
`17; Palomar, 2020 WL 2115625 at *3. This Court has held that merely opposing a plaintiff’s IPR
`estoppel arguments does not trigger waiver, and that is all Teva substantively presents here.
`Palomar, 2020 WL 2115625 at *4 (rejecting the proposition that a plaintiff “could trigger a waiver
`simply by asserting a challenge” based on IPR estoppel).
`
`Regarding the circumstances by which Lilly became aware of the Tan Thesis (Topic
`No. 2), Teva fails to identify any waiver of privilege in Lilly’s response to Interrogatory Nos. 16
`and 17. Indeed, there is none. Lilly properly responded to Teva’s interrogatories by providing
`(1) factual information that Lilly undertook a prior art search, (2) factual information about Lilly’s
`knowledge of the Tan Thesis, and (3) factual information about nonprivileged communications
`with third parties regarding how Lilly obtained the Tan Thesis. Teva Ex. 3 at 2-5; Teva Ex. 4 at
`4-6. Nowhere in these responses did Lilly selectively disclose privileged communications or work
`product. See Upjohn Co. v. United States, 449 U.S. 383, 395 (1981) (“The privilege only protects
`disclosure of communications; it does not protect disclosure of the underlying facts….”).
`
`

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`Case 1:18-cv-12029-ADB Document 133 Filed 07/16/21 Page 3 of 4
`ECF Letter to Judge Burroughs
`July 16, 2021
`Page 3
`
`Accordingly, the Court should reject Teva’s incorrect assertions of privilege waiver and
`deny its request to compel corporate testimony.
`
`II.
`
`Corporate Testimony from an Attorney Is Not Appropriate Relief
`
`To the extent the Court grants Teva any relief, Lilly respectfully submits that a deposition
`of an in-house or outside attorney for Lilly would not be appropriate. As this Court has recognized,
`taking the deposition of an opposing party’s attorney presents troubling concerns about “back-door
`method[s] for gleaning privileged information about an opponent’s litigation strategy.” RP Mach.
`Enter., Inc. v. UPS Capital Bus. Credit, 2006 WL 8458644, at *4 (D. Mass. Nov. 1, 2006)
`(“[C]ourts do not look favorably on such attempts” to depose counsel of an opposing party) (citing
`Shelton v. Am. Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986)).
`
`Instead, any relief should be in the form of written discovery. See Bank of Am., N. A. v.
`Barnes Hill, LLC, No. 16-11583, 2018 WL 10247150 at *1-2 (D. Mass. July 26, 2018) (granting
`protective order against deposition of opposing party’s in-house counsel in favor of written
`discovery, i.e., interrogatories). Affording only written discovery would be fully consistent with
`how Teva itself has conducted discovery in this case, denying Rule 30(b)(6) witnesses when it has
`provided an interrogatory response concerning the same issues. Ex. 3 (Teva letter dated May 17,
`2021) at 3 (“Teva explained on the meet and confer that it would not provide a witness on [Lilly’s]
`Topic 18 because Teva had already provided all non-privileged information under which it first
`became aware of the Tan Thesis in an interrogatory response.”). Accordingly, to the extent Teva
`is entitled to any relief, it should be in the form of written discovery, i.e., supplementation and/or
`verification of Lilly’s responses to Teva’s corresponding Interrogatory Nos. 16 and 17 under oath,
`as appropriate.
`
`III.
`
`Any Relief Granted Should be Reciprocal and Apply to Both Parties
`
`Teva’s request to compel corporate testimony is also undermined by its refusal to provide
`any reciprocal discovery on Lilly’s discovery requests directed to the same subject matter. It is
`Teva, not Lilly, who bears the burden of establishing that IPR estoppel applies under 35 U.S.C.
`§ 315(e). Palomar, 2020 WL 2115625 at *4 (IPR estoppel is an “affirmative defense” for which
`the plaintiff must make a “prima facie showing” before any burden of production shifts to the
`defendant). Teva’s failure to designate a corporate witness regarding its own prior art searching
`and awareness of the Tan Thesis places Teva in poor standing to demand such a witness from
`Lilly.
`
`To the extent the Court grants Teva any relief, Lilly requests that the Court make that relief
`reciprocal and—if corporate testimony is considered appropriate—require Teva to produce a
`corporate witness for Lilly’s 30(b)(6) Topic Nos. 18 and 19 so that the parties are on equal footing
`as to discovery regarding the IPR estoppel issues in this case. Ex. 4 at 23-24. Such reciprocal relief
`would be warranted because, if anything, the prior art searching of Teva and any of its
`predecessors-in-interest is potentially more relevant than Lilly’s. For example, if Teva’s own
`searches did not locate the Tan Thesis, that evidence would substantially undermine Teva’s IPR
`estoppel position that a reasonably skilled searcher would have found the Tan Thesis. If Teva did
`
`

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`Case 1:18-cv-12029-ADB Document 133 Filed 07/16/21 Page 4 of 4
`ECF Letter to Judge Burroughs
`July 16, 2021
`Page 4
`
`find the Tan Thesis, Teva would appear to face significant inequitable conduct concerns by failing
`to disclose it to the U.S. Patent and Trademark Office during prosecution.
`
`Furthermore, if merely raising an objection to IPR estoppel were sufficient to waive
`privilege (i.e., contrary to this Court’s guidance in Palomar), Teva’s affirmative assertion of IPR
`estoppel should unquestionably waive any privilege Teva may have concerning its own prior art
`searching. There is no basis to treat the parties differently. Lilly thus requests reciprocity in any
`relief that the Court may be inclined to grant.
`
`IV.
`
`Conclusion
`
`For the foregoing reasons, Lilly respectfully requests that the Court deny Teva’s letter to
`compel or, if relief is warranted, order reciprocal relief so that the parties are on equal footing as
`to discovery regarding the IPR estoppel issues in this case. Thank you for your kind attention to
`this matter. Lilly is available for a status call at the Court’s convenience.
`
`Respectfully submitted,
`
`/s/Andrea L. Martin
`Andrea L. Martin
`amartin@burnslev.com
`D: 617-345-3869
`
`cc: All Counsel of Record (by ECF)
`4825-1203-5058.4
`
`