Magistrate Judge Schneider of the District of New Jersey granted plaintiff Supernus’s motion to compel thirty-three documents that defendant TWi claimed were inadvertently produced privileged documents. The documents at issue concern defendant’s testing of the solubility of the active ingredient oxcarbazepine in the presence of certain excipients. The Court noted that “[a]ccording to plaintiff, the test results are important because they show that ingredient(s) in defendant’s accused tablets enhance the solubility of oxcarbazepine, thereby proving infringement of that claim limitation.” Defendant argued that the tests were conducted “in an attempt to replicate the testing done in the patents-in-suit,” “have no application” to defendant’s “technical ANDA submission to the FDA,” and “relate to tests that were conducted by TWi at the direction of counsel for the purpose of obtaining legal advice and in anticipation of litigation.” The Court rejected those arguments in a nine-page opinion, ruling that “[w]hat is compelling to the Court is that defendant’s tests were not primarily prepared for the purpose of rendering legal advice or preparing for anticipated litigation,” but “to conduct research and development in order to assist TWi to prepare and file its ANDA, and to decide what ingredients to use.” The opinion should serve to dispel a common misperception held by many patent litigators that merely “involving” yourself in testing conducted by your client, no matter what the purpose, will shield that testing from discovery. As Judge Schneider explains, “[u]nfortunately for defendant, counsel incorrectly assumed that merely because he was ‘involved’ with defendant’s testing that defendant’s test results would be privileged.” If testing does need to be conducted solely for litigation purposes, outside counsel is better off engaging a third-party laboratory to avoid any argument that the tests have a different primary purpose (e.g., research and development).
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