Production of prosecuting attorney’s memorandum about prior art waives privilege

Regeneron Pharmaceuticals, Inc. v. Merus B.V.

Case Number: 1:14-cv-01650-KBF

Judge Forrest, having determined that Regeneron’s production of a memorandum discussing prior art was a waiver of attorney-client privilege, ordered Regeneron to produce all documents concerning its decision not to submit prior art to the USPTO.

Merus, two days before it was to depose an attorney involved in prosecution of U.S. Patent No. 8,502,018 (“Methods of modifying eukaryotic cells”), alerted patentee Regeneron of what it called “damaging evidence of inequitable conduct.” In response, Regeneron produced a memorandum that it said the witness prepared in order to memorialize his thinking. As such, Regeneron argued, the document was not an attorney-client privileged communication and so its production was not a waiver of the attorney-client privilege.  Judge Forrest reviewed e-mails enclosing and discussing the memorandum in camera, and concluded the opposite:  “it is seriously incorrect to assert that [the witness] merely used the documents to assist himself in connection with some professional obligation unrelated to his advisory role to Regeneron.” A failure to produce related documents, Judge Forrest said, would allow Regeneron to use attorney-client privilege as both a sword and a shield.

The articles on our Website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice.