By Eric Schweibenz
On May 20, 2014, ALJ Charles E. Bullock issued the public version of Order No. 22 (dated May 8, 2014) granting Novak Druce Connolly Bove + Quigg’s Motion to Quash Subpoena in Certain Antivenom Compositions and Products Containing the Same (Inv. No. 337-TA-903).

By way of background, the investigation is based on an October 20, 2013 complaint filed by BTG International Inc. (“BTG”) alleging violations of Section 337 in the importation into the U.S. and sale of certain antivenom compositions and products containing the same that infringe one or more claims of U.S. Patent No. 8,048,414.  See our November 1, 2013 post for more details on the complaint.  According to the Notice of Investigation, the Commission has identified a number of entities as the respondents in this investigation, including Laboratorios Silanes S.A. de C.V. and Instituto Bioclon S.A. de C.V. (collectively “Silanes”).  See our December 2, 2013 post for more details on the Notice of Investigation.

According to the Order, non-party Novak Druce Connolly Bove + Quigg LLP (“Novak Druce”) moved to quash a subpoena duces tecum served on it by Silanes which sought prior art relevant to the patent-in-suit obtained by Novak Druce in connection with its representation of former Respondents Veteria Labs SA de CV and BioVeteria Life Sciences, LLC (collectively “Veteria”).  As explained in our March 18, 2014 post, ALJ Bullock previously granted a motion to terminate Veteria based on BTG’s withdrawal of its complaint as to Veteria. 

Novak Druce sought to quash the subpoena on the grounds that it sought documents protected by the work product doctrine.  Specifically, Novak Druce argued that any potentially responsive documents in its possession were searched for, evaluated, selected, and compiled in anticipation of the Investigation.  Novak Druce also asserted that Silanes had failed to establish that (1) it has a “substantial need” for the requested information, (2) obtaining the information through other means would cause “undue hardship,” and (3) the information sought is not opinion work product.  Additionally, Novak Druce asserted that the discovery sought by Silanes was unreasonable and unduly burdensome given the availability of the documents sought from other sources.  The Commission Investigative Staff (“OUII”) also agreed that the subpoena should be quashed.

Silanes argued that the prior art references it sought are documents “drawn from publically available sources” and were not prepared in anticipation of litigation with respect to the Investigation, and, therefore, are not protected under the work product doctrine.  Silanes further argued that, even if the documents were privileged, Novak Druce had waived any privilege by producing a portion of the documents to other parties in the Investigation.  Silanes also contended that Novak Druce had failed to meet its burden of proving that the subpoena was burdensome.

ALJ Bullock reviewed the pleadings and exhibits and found Novak Druce’s and OUII’s arguments persuasive.  Accordingly, ALJ Bullock granted the motion.

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