A Question Quite Worthy Of A Law School Final Exam: Are Any Parts Of A Scientist-Attorney’s “Private Science” Work Product Discoverable In Patent Litigation?

Just yesterday, in the federal courthouse in San Jose, California — during the ongoing global patent battles between Merck and Gilead, over who owns the rights to the effectiveness of sofosbuvir, in a human body, to fight Hep C — a very able federal Magistrate Judge has ruled that Gilead cannot compel the discovery and production of a now Merck affiliated attorney/scientist’s work, surrounding so-called replication experiments — on sofosbuvir (now branded, and sold, in multiple billions of dollars of revenue, per year, by Gilead, under the trademark Sovaldi®), at least insofar as the attorney kept his mental impressions of the same entirely to himself.

Do see the opinion and order, but I would bet that Gilead may appeal this ruling at some point, to a higher court.

That said, I do think the Magistrate got it right — there seems to be no compelling need for this information, as to Gilead — at least not insofar as Gilead should be able to run the same experiments itself, and reach its own opinions/conclusions about sofosbuvir, without having to “get inside the head” of a now Merck-affiliated attorney — on the matters. [Said another way, that scientist’s opinions are not necessarily reflective of Merck’s intent, in any way.] Do read the whole eight page PDF file, but here is a bit:

. . . .Scientist A conducts an experiment. Scientist B recreates that experiment years later, with a protocol provided by Scientist C. In a patent suit over this work, all would seem discoverable, even after the new Federal Rules have renewed awareness of the importance of proportionality. . . .

But what if Scientist C also is an attorney for the party that hired Scientist B, and the discovery sought includes work product in his possession that he never communicated to anyone, let alone Scientist B? This motion presents just such a question. . . .

“[D]ocuments and tangible things that are prepared in anticipation of litigation” may be discoverable if the party seeking discovery shows that it has “substantial need for the materials to prepare its case and cannot, without undue hardship, obtain their substantial equivalent by other means. . . .” However, discovery of opinion work product, which is comprised of the “‘mental impressions, conclusions, opinions, or legal theories of an attorney’” requires a higher showing. . . . “Rule 26 accords special protection to work product revealing the attorney’s mental processes. . . .” In the Ninth Circuit, “opinion work product may be discovered and admitted when mental impressions are at issue in a case and the need for the material is compelling.”

Applying the above standards, Gilead’s motion must be denied. Weingarten’s mental impressions are not at issue in this case, and Gilead has not shown that they have a compelling need for the material. . . .

So — would you have passed, or failed — on this question? Do tell. Smile.

This battle will rage on through most of 2016, but a first US trial date is now set in the first week of March in California — so, as ever, we shall see.

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