By Eric Schweibenz
On June 2, 2011, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 7 (dated May 18, 2011) in Certain Gemcitabine and Products Containing Same (Inv. No. 337-TA-766).

In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Eli Lilly and Company’s (“Lilly”) motion to quash a subpoena duces tecum and ad testificandum directed to two members of Lilly’s trial team.  In its motion, Lilly sought a protective order precluding Respondent Intas Pharmaceutical Ltd. (“Intas”) from further attempting to depose Lilly’s trial counsel on issues pertaining to evidence of importation.

By way of background, the Complaint in this investigation alleges that Intas manufactures, sells for importation, imports, and/or sells after importation gemcitabine and products containing the same using an infringing process.  Intas denied any such importation or sale.  In response, two of Lilly’s attorneys purchased Intas’ gemcitabine drug products online for delivery to an address in the United States.  Lilly then submitted a letter to the Commission documenting this importation.  After the investigation was instituted, and during discovery, Intas subpoenaed the two attorneys requesting documents and testimony related to the imported purchases.  Lilly filed a motion to quash the subpoenas.

In support of its motion to quash, Lilly argued that it was unnecessary for Intas to depose the attorneys because it had been provided with all non-privileged information concerning the purchases.  In addition, Lilly asserted that because the two attorneys were trial counsel, Intas must meet a higher burden in order to depose them and had not done so.

Both Intas and the Commission Investigative Staff (“OUII”) opposed the motion.  Intas argued that it does not have FDA approval to sell gemcitabine in the United States and that the pharmacies from which the subject products were purchased were not authorized to sell Intas’ gemcitabine product in the United States.  Thus, Intas alleged that it should be able to depose the attorneys as to how they were able to obtain the drug.  Intas also argued that privilege did not apply because Lilly’s counsel waived attorney-client privilege and work-product protection by creating the factual bases relied upon for evidence of importation.  OUII agreed that a waiver had occurred, but that the waiver was of a limited scope.  Specifically, OUII argued that Intas should be allowed to question the attorneys as to whether or not all non-privileged information had been produced and as to the accuracy of Lilly’s characterization of the facts.

In the Order, ALJ Rogers determined that Lilly’s production of documents and answers to interrogatories did not deem the depositions at issue unnecessary.  The ALJ also found that in this case the attorneys’ status as trial counsel did not prevent them from being deposed.  The ALJ determined that Intas should be allowed to proceed with the deposition and that the subpoenas should not be quashed in their entirety.

As to the propriety of the individual requests and topics, the ALJ determined that in Lilly’s disclosure of the facts surrounding importation, there had been no disclosure of attorney-client communications or work-product information.  Thus, Lilly had not waived privilege. Accordingly, one document request and one deposition topic which sought only privileged information were struck in their entirety.  As to the remaining requests and topics, the ALJ found that it was possible that there were responsive, non-privileged documents.