Massachusetts Patent Litigation Wrap Up — March 2018

This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders issued in pending cases.

Shire LLC v. Abhai, LLC, 2018 WL 1419794, NO. 15-13909-WGY (D. Mass., Mar. 22, 2018)

Shire brought suit against Abhai alleging infringement of U.S. Patent No. RE42,096 covering Shire's treatment for ADHD, Adderall XR. The suit relates to Abhai's Abbreviated New Drug Application "ANDA" with the FDA. After a bench trial, the Court entered findings of fact and rulings of law, finding that Abhai infringes the '096 patent and had failed to show the patent's invalidity.

Early in the opinion, the Court observed that "[t]he challenge for Abhai here is to design a pharmaceutical product that falls just beyond the reach of Shire's patents yet is sufficiently bioequivalent and therapeutically equivalent to Shire's product to satisfy the FDA of its efficacy." Noting that the parties failed to find agreement through mediation, the Court spent the majority of the Order's 82 pages explaining its finding of infringement.

The last section of the decision addressed Shire's request for sanctions and fees due to litigation misconduct. The Court found that, during the litigation, Abhai failed to correct deposition testimony concerning key dissolution data that it knew to be incorrect after additional testing, allowing Shire's experts to rely on them. Abhai also failed to alert the FDA as to the incorrect data. It was not until the final 2 days of trial that Abhai disclosed that the key data on which it had been relying "were incorrect." The Court characterized the conduct of Abhai to reflect "an appalling lack of awareness of a litigant's responsibility to our justice system." The Court further directed the Clerk to send a copy of its opinion to the FDA, noting that "[t]he FDA would be well advised to take notice of this pervasive corporate unwillingness to play by the rules."

Shire sought "a whopping" $2,750,000 for attorneys' fees based on this and additional litigation misconduct it identified. While agreeing that sanctions were appropriate, the Court directed Shire to submit a revised claim for fees limited to fees incurred by way of the conduct specifically discussed in the Order, and sanctioned Abhai in the amount of $30,000 for having "recklessly squandered five days during which [the] Court could better have devoted itself to teaching American jurors and attending to litigants prepared to follow the straightforward rules of civil procedure."

Abhai filed a notice to appeal on April 23, 2018.

Lynx System Devs., Inc. v. Zebra Enterprise Solutions Corp., 2018 WL 1532614, No. 15-12297-GAO (D. Mass, Mar. 28, 2018)

In this action involving "trade secret misappropriation, inequitable patent procurement, and various contract and common law claims arising from the parties' past business dealings", Zebra produced emails in unredacted form that were allegedly attorney-client privileged, which it then attempted to claw back. Lynx challenged the designation.

The Court found that privilege did not extend to two groups of communications with third-party consultants because they were sent to the consultants to seek business advice, not legal advice. The Court further found that the consultants were not "nearly indispensable or served some specialized purpose in facilitating the attorney-client communications." The Court noted that attorney-client privilege did not attach post hoc merely because a party's "employees and attorneys intended for the conversations to be privileged."

As to the third category of documents, the Court found that party-internal emails involving multiple in-house attorneys, one of whom responded to provide legal advice, were privileged, even though the employees did not explicitly seek legal advice on the face of the emails.