On July 20, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 43 (dated June 18, 2012) providing additional guidance regarding Order No. 32 in Certain Coenzyme Q10 Products and Methods of Making Same (Inv. No. 337-TA-790). 

According to the Order, complainant Kaneka Corporation (“Kaneka”) was previously required by Order No. 32 to produce certain categories of documents for which it failed to establish privilege as a result deficiencies in its privilege log.  Kaneka and respondents Zhejiang Medicine Co., Ltd. and ZMC-USA, LLC (collectively, “ZMC”) could not reach a consensus as to whether approximately 140 documents on Kaneka’s privilege log were required to be produced.

The first category of documents included entries related to patent prosecution and litigation issues for which the patent, application and/or litigation (including country) information was not disclosed.  Kaneka argued that its prosecution counsel separately served a privilege log that overlaps with these entries and that ZMC has a full understanding of that firm’s services to Kaneka after deposing an attorney therewith.  ZMC asserted that the privilege log served by Kaneka’s prosecution counsel has no bearing on the sufficiency of Kaneka’s privilege log because Kaneka’s log must establish privilege on its own and there is no way to correlate the entries on the two logs.  ALJ Rogers agreed with ZMC and ordered Kaneka to produce the documents.

The second category of documents included entries related to litigation issues for which the patent, application and/or litigation (including country) information was not disclosed.  Kaneka maintained that (1) a claim of attorney-client privilege does not necessarily require the identification of a patent or litigation to preserve privilege; (2) communications between identified members of Kaneka’s counsel relating to litigation are entitled to privilege and/or work product protection, especially with members of the Adli Law Group; and (3) the sufficiency of privilege must be evaluated on an entry-by-entry basis under the Ground Rules, and that its claims for privilege for the disputed entries are adequate.  ZMC argued that Kaneka waived its claim to privilege under Orders Nos. 17 and 32 with respect to any documents concerning patent matters that do not include a description of the litigation (including country) to which the document pertains, and that the orders do not distinguish between communications with Dr. Adli and his firm or any other counsel.  ALJ Rogers again agreed with ZMC and ordered Kaneka to produce the documents.

The third category of documents included entries related to legal advice but for which the patent, application and/or litigation (including country) information was not disclosed.  ZMC argued that these documents must be produced because the entries at issue merely identify a field of law and, pursuant to Order Nos. 17 and 32, do not provide the detail necessary to assess Kaneka’s claim of privilege.  Kaneka asserted that there is no blanket requirement to identify the litigation to obtain protection under the attorney-client privilege, that the privilege and attorney work product protection should be preserved for communications between Kaneka and members of the Adli Law Group and its prosecution counsel, and that certain entries have no litigation or relevant patent to identify, especially with respect to work product documents prepared in anticipation of litigation.  ALJ Rogers deemed Kaneka’s argument that work product documents prepared in anticipation of litigation have no litigation or relevant patent to identify “nonsensical” and ordered Kaneka to produce the documents.

The last category of documents included entries specifying authors or recipients that were not identified on Kaneka’s outside counsel or personnel lists.  ZMC points out that either (1) the log provides no identification of the entity with which the person is affiliated; (2) the log lists an entity after a name but does not explain what it is or identify it as a law firm; and/or (3) the log lists a law firm affiliated with a person but that person is not identified as an attorney.  Kaneka argued that each of the entries at issue explicitly identifies Kaneka employees and a law firm, and that the confidential and privileged nature of the communications should be apparent to ZMC.  ALJ Rogers ordered that Kaneka must produce documents for the entries where the author or recipient is not on Kaneka’s list of outside counsel or personnel list and is not identified as counsel for Kaneka in the entry description.  The ALJ found the remaining entries on Kaneka’s log sufficient.