Case 1:18-cv-12029-ADB Document 137 Filed 08/09/21 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Civil Action No. 18-cv-12029-ADB
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`TEVA PHARMACEUTICALS
`INTERNATIONAL GMBH and
`TEVA PHARMACEUTICALS
`USA, INC.,
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`Plaintiffs,
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`v.
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`ELI LILLY AND COMPANY,
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`Defendant.
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`ORDER
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`BURROUGHS, D.J.
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`I.
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`THE DISPUTE
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`The Court has reviewed the parties’ letters regarding Teva’s request to compel corporate
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`testimony as to Topics 1 and 2 of its Federal Rule of Civil Procedure 30(b)(6) deposition notice.
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`[ECF Nos. 130, 133, 136]. Topic 1 concerns Lilly’s efforts to search for prior art references
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`generally, and Topic 2 relates to Lilly’s knowledge of a specific prior art reference, the Tan
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`Thesis. [ECF No. 130-1 at 8–9]. Lilly did not designate a corporate representative for these
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`topics because the “information [Topics 1 and 2] seek[] is privileged and/or can and is being
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`sought from other available sources.” [Id. at 9–10].
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`This dispute stems from Lilly’s assertion of a prior art invalidity defense based on the
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`Tan Thesis and Teva’s argument that Lilly is estopped from asserting that defense under 35
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`U.S.C. § 315(e)(2). “[A] prior-art reference not raised in the [inter partes review (“IPR”)]
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`proceeding is subject to the statutory bar of 35 U.S.C. § 315(e)(2) if (1) the IPR petitioner
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`actually knew of the reference or (2) a skilled searcher conducting a diligent search reasonably
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`could have been expected to discover the reference.” Palomar Techs., Inc. v. MRSI Sys., LLC,
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`No. 18-cv-10236, 2020 WL 2115625, at *3 (D. Mass. May 4, 2020).
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`Teva argues that Lilly has waived any claim that the information sought in Topics 1 and 2
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`is privileged because Lilly put its prior art searches and its knowledge of the Tan Thesis “at
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`issue” in this case. [ECF No. 130-1 at 1]. In support of its position, Teva states that it
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`propounded the following contention interrogatory regarding Lilly’s prior art defense:
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`If Defendant contends that the outcome of any inter partes review proceedings
`concerning the patents-in-suit does not estop Defendant from asserting that any of
`the patents-in-suit are invalid under 35 U.S.C. §§ 102 and/or 103, state all factual
`and legal bases for that contention, including all facts, documents, things or other
`evidence supporting, contradicting or otherwise concerning that contention and the
`bases for invalidity for which Defendant contends it is not estopped from arguing.
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`[ECF No. 130-1 at 15].
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`Lilly’s responded, in part, that
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`Lilly did not discover the Tan Thesis until after each of the petitions for IPR had
`been instituted by the Patent Trial and Appeal Board (“PTAB”), and the reference
`could not have been found through a reasonably diligent search.
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`[ECF No. 130-1 at 18].
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`Lilly contends that any privilege-waiver argument lacks merit because (1) Lilly’s
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`response to a contention interrogatory cannot trigger a wavier and (2) Lilly has disclosed only
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`facts, not privileged information, surrounding its knowledge of the Tan Thesis. [ECF No. 133 at
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`2].
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`II.
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`DISCUSSION
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`“While this is a patent case, the issues raised here pertaining to privilege and waiver are
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`not unique to patent law and thus First Circuit law concerning privilege applies.” Crane Sec.
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`Techs., Inc. v. Rolling Optics, AB, 230 F. Supp. 3d 10, 15 (D. Mass. 2017). Courts in this
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`district have recognized the concept of an “at issue” waiver—whereby a party waives privilege
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`as to a certain topic by putting the privileged information “at issue”—and apply the following
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`three factors in determining whether such a waiver has occurred:
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`1) whether the proponent of the privilege took some affirmative step such as filing
`a pleading; 2) whether the affirmative act put the privileged information at issue by
`making it relevant to the case; and 3) whether upholding the privilege would deny
`the opposing party access to information vital to its case.
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`Bacchi v. Mass. Mut. Life Ins. Co., 110 F. Supp. 3d 270, 276 (D. Mass. 2015); Traverse v.
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`Gutierrez Co., No. 18-cv-10175, 2019 WL 12291347, at *6 (D. Mass. May 6, 2019).
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`Turning first to Topic 2, Lilly’s actual knowledge of the Tan Thesis is directly relevant to
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`the estoppel analysis. The first step of the estoppel analysis is a subjective one that asks whether
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`the party asserting prior art “actually knew of the prior art references at the time of the IPR
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`proceedings.” Palomar Techs., Inc., 2020 WL 2115625 at *9. Lilly is asserting the prior art
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`defense and its contention interrogatory response indicates that its position in this litigation is
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`that it did not know about the Tan Thesis prior to IPR proceedings. Accordingly, Lilly has put
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`its subjective knowledge of the Tan Thesis at issue. Lilly therefore cannot disclose certain facts
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`about its discovery of the Tan Thesis, while also relying on privilege to withhold other
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`information that may directly speak to when that thesis was discovered. Accordingly, Teva is
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`entitled to know the circumstances surrounding Lilly’s discovery of the Tan Thesis and that
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`information cannot be withheld on privilege grounds. As to the form of this discovery, given the
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`narrow scope of the inquiry (i.e., when and how Lilly learned about the Tan Thesis), a written
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`response to an interrogatory encompassing the information sought in Topic 2 will afford Teva
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`the necessary relief.
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`As for Topic 1, it is not obvious from the record before the Court that Lilly is relying on
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`its own prior art searches to demonstrate that the Tan Thesis could not have been located with a
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`reasonable search. Unlike the subjective inquiry described above, “[w]hether a skilled searcher
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`conducting a diligent search reasonably could have been expected to discover [the Tan Thesis]”
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`is an objective inquiry, and “any actual search performed at the relevant time is not conclusive
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`evidence of a reasonable search[,] . . . [although] evidence concerning the design, performance,
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`and results of such a search may be relevant on the issue of what a reasonably diligent search
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`would have produced.” Palomar Techs., Inc., 2020 WL 2115625, at *9.
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`The Court is hesitant to make assumptions when deciding whether a party has waived
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`privilege. If Lilly does not intend to rely on its own searches regarding the Tan Thesis and prior
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`art generally, then Lilly is not attempting to use privilege as both a shield and a sword as Teva
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`contends, and there is no basis for ordering Lilly to disclose privileged information. For this
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`reason, it is ordered that Lilly shall serve and file within seven (7) days of the date of this Order
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`written notice as to whether it intends to rely on its own prior art search efforts in connection
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`with its prior art invalidity defense or Teva’s estoppel argument. If Lilly provides notice that it
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`will not rely on its own prior art searches, it shall be precluded from relying on evidence
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`regarding its own prior art searches at later stages of this case. If Lilly does intend to rely on its
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`prior art searches, the Court will then enter an appropriate order on the scope of any discovery
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`relating to Topic 1.
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`Finally, at this time and based on the briefing before it, the Court declines Lilly’s request
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`to order reciprocal relief because Lilly has not demonstrated that Teva is relying on its subjective
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`knowledge of the Tan Thesis and/or its own prior art searching, or that Teva’s own actions and
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`knowledge are relevant to the estoppel analysis.
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`III.
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`CONCLUSION
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`Accordingly, Teva’s request, [ECF No. 130], is GRANTED in part and DENIED in part.
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`• Lilly shall provide a written response to Topic 2 and shall not withhold
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`information responsive to that request based on privilege.
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`• Within seven (7) days of the entry of this Order, Lilly shall file a written notice
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`with the Court stating whether it will rely on its own prior art searches.
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`SO ORDERED.
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`August 9, 2021
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`/s/ Allison D. Burroughs
`ALLISON D. BURROUGHS
`U.S. DISTRICT JUDGE
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`5
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