United States Court of Appeals

FOR THE DISTRICT OF COLUMBIA CIRCUIT

Argued November 15, 2017 Decided June 19, 2018

No. 16-5356

FEDERAL TRADE COMMISSION,

APPELLANT

v.

BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.,

APPELLEE

Consolidated with 16-5357

Appeals from the United States District Court

for the District of Columbia

(No. 1:09-mc-00564)

Mark S. Hegedus, Attorney, Federal Trade Commission, 

argued the cause for appellant. With him on the briefs were 

David C. Shonka, Acting General Counsel, and Joel Marcus, 

Deputy General Counsel for Litigation. 

Lawrence D. Rosenberg argued the cause for appellee. 

With him on the briefs were Michael Sennett and Nicole C. 

Henning.

John P. Elwood, Zachary J. Howe, Kate Comerford Todd, 

Sheldon Gilbert, and Amar D. Sarwal were on the brief for 
2

amicus curiae Chamber of Commerce of the United States of 

America and Association of Corporate Counsel in support of 

Boehringer Ingelheim Pharmaceuticals, Inc. Warren D. 

Postman entered an appearance.

Before: KAVANAUGH and PILLARD, Circuit Judges, and 

RANDOLPH, Senior Circuit Judge.

Opinion for the Court filed by Circuit Judge KAVANAUGH,

with whom Circuit Judge PILLARD and Senior Circuit Judge

RANDOLPH join.

Concurring opinion filed by Circuit Judge PILLARD.

KAVANAUGH, Circuit Judge: The pharmaceutical 

company Boehringer claimed attorney-client privilege over 

certain documents subpoenaed by the Federal Trade 

Commission. The attorney-client privilege applies to a 

communication between attorney and client if at least “one of 

the significant purposes” of the communication was to obtain 

or provide legal advice. In re Kellogg Brown & Root, Inc.,

756 F.3d 754, 758 (D.C. Cir. 2014). Under that standard, the 

attorney-client privilege applies to the documents at issue here. 

We affirm the judgment of the District Court.

I

A drug manufacturer that holds a patent has a market 

advantage. When a generic drug company challenges the 

validity of that patent, it threatens the patent holder’s 

monopoly. Such a challenge can result in a settlement in 

which the patent holder pays the challenger to drop the 

challenge. That scenario is known as a “reverse payment” 

settlement – so labeled because the settlement requires the 
3

patent holder to “pay the alleged infringer, rather than the other 

way around.” FTC v. Actavis, Inc., 570 U.S. 136, 141 (2013).

 In Actavis, the Supreme Court analyzed the legality of 

reverse payments. If the payments are made simply to avoid

litigation costs, they may be lawful. But if “the basic reason

is a desire to maintain and to share patent-generated monopoly 

profits,” then “the antitrust laws are likely to forbid the 

arrangement.” Id. at 158.

In 2008, a patent negotiation occurred between Boehringer 

(the name brand with the patent) and Barr (the generic seeking 

to challenge the patent). Ultimately, the parties reached a 

reverse payment settlement. 

The Federal Trade Commission pays close attention to 

reverse payment settlements to ensure that they do not run afoul 

of antitrust law. In 2009, the Commission began investigating 

the Boehringer-Barr settlement. During the investigation, the 

Commission subpoenaed documents from Boehringer. 

Boehringer claimed that the subpoenaed documents were 

created by Boehringer employees for Boehringer’s general 

counsel, Marla Persky, at her request. The documents allowed 

Persky to analyze and navigate the treacherous antitrust issues

surrounding reverse payment settlements. Other documents 

reflected communications between Persky and Boehringer 

executives regarding the possible settlement. Boehringer

asserted attorney-client privilege over the documents. 

The burden is on the proponent of the privilege to 

demonstrate that it applies. See United States v. Legal 

Services for New York City, 249 F.3d 1077, 1081 (D.C. Cir. 

2001). In a thorough and careful opinion, the District Court 

agreed with Boehringer that the documents at issue here are

covered by the attorney-client privilege. To the extent the
4

Commission challenges the legal test employed by the District 

Court, our review is de novo. To the extent the Commission 

challenges the facts found by the District Court, our review is 

for clear error.

II

As relevant here, the attorney-client privilege applies to a 

confidential communication between attorney and client if the

communication was made for the purpose of obtaining or 

providing legal advice. See Upjohn Co. v. United States, 449 

U.S. 383 (1981); In re Kellogg Brown & Root, Inc., 756 F.3d 

754, 757 (D.C. Cir. 2014). The privilege covers both (i) those 

communications in which an attorney gives legal advice; and

(ii) those communications in which the client informs the 

attorney of facts that the attorney needs to understand the 

problem and provide legal advice.

In the corporate context, the attorney-client privilege 

applies to communications between corporate employees and a 

corporation’s counsel made for the purpose of obtaining or 

providing legal advice. The privilege applies regardless of

whether the attorney is in-house counsel or outside counsel.

The application of the attorney-client privilege can

become more complicated when a communication has multiple 

purposes – in particular, a legal purpose and a business 

purpose. In this case, for example, the communications had a 

legal purpose: to help the company ensure compliance with the 

antitrust laws and negotiate a lawful settlement. But the 

communications also had a business purpose: to help the

company negotiate a settlement on favorable financial terms.

In a situation like this where a communication has multiple 

purposes, courts apply the “primary purpose” test to determine 
5

whether the communication is privileged. See Kellogg, 756 

F.3d at 759. In Kellogg, this Court recently explained that 

courts applying the primary purpose test should not try “to find 

the one primary purpose” of a communication. Attempting to 

do so “can be an inherently impossible task” when the 

communications have “overlapping purposes (one legal and 

one business, for example).” Id. “It is often not useful or 

even feasible to try to determine whether the purpose was A or 

B when the purpose was A and B.” Id. Rather, courts 

applying the primary purpose test should determine “whether 

obtaining or providing legal advice was one of the significant 

purposes of the attorney-client communication.” Id. at 760

(emphasis added); see 1 RESTATEMENT (THIRD) OF THE LAW 

GOVERNING LAWYERS § 72, Reporter’s Note, at 554 (2000).

Our approach to this issue, as we explained in Kellogg,

helps to reduce uncertainty regarding the attorney-client 

privilege. Reducing uncertainty is important in the privilege

context because, asthe Supreme Court has stated, an “uncertain 

privilege, or one which purports to be certain but results in 

widely varying applications by the courts, is little better than 

no privilege at all.” Upjohn, 449 U.S. at 393.

In this case, the question therefore is whether obtaining or 

providing legal advice was one of the significant purposes of 

the communications at issue. The answer is yes.

The relevant communications consist primarily of the 

transmission of factual information from Boehringer’s 

employees to the general counsel, at the general counsel’s 

request, for the purpose of assisting the general counsel in

formulating her legal advice regarding a possible settlement. 

Other communications were between the general counsel and 

the corporation’s executives regarding the settlement. All of 

those communications are protected by the attorney-client 
6

privilege because one of the significant purposes of the 

communications was “obtaining or providing legal advice” –

namely, settlement and antitrust advice. Kellogg, 756 F.3d at 

758. 

To be sure, the communications at issue here also served a 

business purpose. The decision whether and at what price to 

settle ultimately was a business decision as well as a legal 

decision for Boehringer. But as we stated in Kellogg, what 

matters is whether obtaining or providing legal advice was one 

of the significant purposes of the attorney-client 

communications. Here, as the District Court correctly

concluded, one of the significant purposes of these

communications was to obtain or provide legal advice. It 

follows that Boehringer’s general counsel was acting as an 

attorney and that the communications are privileged.

In so ruling, we emphasize that the attorney-client 

privilege “only protects disclosure of communications; it does 

not protect disclosure of the underlying facts by those who 

communicated with the attorney.” Upjohn, 449 U.S. at 395. 

In this case, therefore, the attorney-client privilege did not and

does not prevent the FTC’s discovery of the underlying facts 

and data possessed by Boehringer and its employees. Nor did 

it prevent the FTC’s discovery of pre-existing business 

documents. But the attorney-client privilege does protect the 

communication of facts by corporate employees to the general 

counsel when, as here, the communications were for the 

purpose of obtaining or providing legal advice. As the Upjohn

Court noted, discovery “was hardly intended to enable a 

learned profession to perform its functions . . . on wits 
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borrowed from the adversary.” Id. at 396 (quoting Hickman

v. Taylor, 329 U.S. 495, 516 (1947)).1

* * *

In its landmark decision in Upjohn Co. v. United States, 

449 U.S. 383 (1981), the Supreme Court explained the

importance of the attorney-client privilege in the business

context: The “vast and complicated array of regulatory 

legislation” requires corporations to “constantly go to lawyers 

to find out how to obey the law . . . particularly since 

compliance with the law in this area is hardly an instinctive 

matter.” Id. at 392. So it was in this case. We affirm the 

judgment of the District Court.

So ordered.

 1

 For a few documents sought by the FTC, Boehringer asserted 

only the work product privilege and not the attorney-client privilege. 

This Court’s prior decision in this case analyzed the work product 

issue. FTC v. Boehringer Ingelheim Pharmaceuticals, Inc., 778 

F.3d 142 (D.C. Cir. 2015). On remand, the District Court applied 

that decision. In a cross-appeal in this case, Boehringer challenges 

the District Court’s decision on the work product privilege. But 

Boehringer forthrightly recognizes that this panel is bound by the 

prior panel’s decision. Boehringer’s real beef is with the prior 

decision. We find no reversible error in the District Court’s 

application of our prior decision. 
PILLARD, Circuit Judge, concurring: I agree with the 

opinion of the court as far as it goes. I write separately to 

emphasize why the spare elegance of the court’s opinion 

should not be mistaken for an expansion of the attorney-client 

privilege recognized in our prior precedents: In short, the 

district court engaged extensively with the disputed documents 

and the bases for the privilege claims, and followed certain 

truncated procedures only with the parties’ consent.

As an exception from the general presumption in favor of 

discovery, the “attorney-client privilege must be strictly 

confined within the narrowest possible limits consistent with 

the logic of its principle.” In re Lindsey, 158 F.3d 1263, 1272 

(D.C. Cir. 1998) (quoting In re Sealed Case, 676 F.2d 793, 807 

n.44 (D.C. Cir. 1982)); see 1 Paul R. Rice, Attorney-Client 

Privilege in the U.S. § 2:3. The party asserting attorney-client 

privilege must prove that “each communication” sought to be 

withheld merits the privilege. United States v. Legal Servs. for 

N.Y.C., 249 F.3d 1077, 1081-82 (D.C. Cir. 2001) (rejecting 

unparticularized assertion of attorney client privilege); see 

Attorney-Client Privilege in the U.S. § 11:11. Under settled

law, the burden of establishing that privilege applies rests with 

the party claiming it. See Op. 3; Legal Servs. for N.Y.C., 249 

F.3d at 1081-82; Lindsey, 158 F.3d at 1270; In re Sealed Case, 

737 F.2d 94, 99 (D.C. Cir. 1984) [hereafter Sealed Case 

(1984)]; FTC v. TRW, Inc., 628 F.2d 207, 213 (D.C. Cir. 1980). 

The proponent must, that is, show that a “significant” purpose 

of every individual “communication” for which it asserts 

privilege is to secure or provide “legal advice.” See In re 

Kellogg Brown & Root, 756 F.3d 754, 759-60 (D.C. Cir. 2014); 

Sealed Case (1984), 737 F.2d at 98-99. 

Clients claiming privilege may seek to shield information 

supplied in confidence to their lawyers. When a client’s 

confidences are a “significant and inseparable part” of the 

lawyer’s advice, they are protected as they appear within 

privileged communications between lawyer and client. Sealed 
2

Case (1984), 737 F.2d at 99. As the court emphasizes, 

however, the attorney-client privilege “only protects disclosure 

of communications; it does not protect disclosure of the 

underlying facts by those who communicated with the 

attorney.” Op. 6 (quoting Upjohn Co. v. United Stated, 449 

U.S. 383, 395 (1981)).

The FTC does not dispute the status of the documents as 

“communications” between lawyer and client, Oral Argument

Tr. at 12, instead focusing on the magistrate judge’s conclusion 

that Boehringer had met its burden to show that the 

communications at issue had a significant legal purpose.

Where a privilege claimant has closely intertwined purposes—

a legal purpose as well as a business purpose—it must still

establish to a “reasonable certainty,” Sealed Case (1984), 737 

F.2d at 99, that “obtaining or providing legal advice was one of 

the significant purposes” animating each communication 

withheld, Kellogg Brown & Root, 756 F.3d at 758-59. Neither 

a general statement that the lawyer wore both lawyer and 

businessperson “hats” during the communications nor a 

blanket assertion of legal purpose is enough. See Sealed Case 

(1984), 737 F.3d at 99; Lindsey, 158 F.3d at 1270. Nor is it 

sufficient to offer as support privilege logs with bare, 

conclusory assertions that the listed communications were 

made for the purpose of securing legal advice. See Legal Servs.

for N.Y.C., 249 F.3d at 1081-82; accord Equal Employment 

Opportunity Commission v. BDO USA, LLP, 876 F.3d 690, 696 

(5th Cir. 2017). The claimant must instead “present to the court 

sufficient facts to establish the privilege” so that the court is in 

a position independently to review the legal-purpose assertion

for each relevant communication. Sealed Case (1984), 737 

F.2d at 99. 

The magistrate judge, having personally “reviewed in 

camera all the documents at issue,” found that Boehringer met 
3

that considerable burden in this case. FTC v. Boehringer 

Ingelheim Pharm., Inc., 180 F. Supp. 3d 1, 6 (D.D.C. 2016). 

That decision is not clearly erroneous. The burden-of-proof 

issue is, to be sure, somewhat obscured on this record because 

of the special process the parties adopted. In response to the 

FTC’s 2009 subpoena, Boehringer initially produced 

approximately 9,500 documents to the FTC and withheld 

approximately 2,400 on the basis of work-product protection 

and/or attorney-client privilege. See Appellee Br. at 14. The 

FTC challenged the application of those shields to over 600 

documents listed in Boehringer’s privilege log. Id. Faced with 

hundreds of disputed documents, a magistrate judge in 2011 

ordered Boehringer to choose a representative sample of 

documents for in camera review. See FTC v. Boehringer 

Ingelheim Pharm., Inc., 286 F.R.D. 101, 106 (D.D.C. 2012); 

Oral Argument Tr. at 31. Boehringer submitted a supporting 

affidavit with specific explanations of its claims of privilege 

for each of the documents in the sample. Sealed App’x 473-

85. At oral argument, Boehringer explained—and the FTC did 

not contest—that Boehringer offered to supplement or amend 

the original privilege logs to provide more support for its 

privilege assertions. The FTC passed on that offer. See Oral 

Argument Tr. at 31-32, 42.

In light of our 2015 decision in this case clarifying the 

standard for work-product protection, see FTC v. Boehringer 

Ingelheim Pharmaceuticals, 778 F.3d 142 (D.C. Cir. 2015), the 

magistrate judge on remand reviewed not only residual work 

product claims but also assertions that documents we held not 

protected as work product were nonetheless privileged 

attorney-client communications, see Boehringer, 180 F. Supp. 

3d 1. Boehringer again offered to supplement the record with 

additional briefing and ex parte affidavits, but the court held

that no additional materials were necessary or appropriate. See 

id. at 22-23, 28. In view of the parties’ original briefing on 
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attorney-client privilege, the sample documents reviewed in 

camera, and the record, which included Boehringer’s 

supporting ex parte affidavit and its privilege logs, the court 

sustained Boehringer’s claims of attorney-client privilege. It 

determined that Boehringer offered more than conclusory 

assertions that each of the disputed communications had a legal 

purpose and, after confirming those assertions through its own 

review of the documents, credited Boehringer’s contention that 

obtaining legal advice was a significant purpose animating 

each communication. Id. at 29-30. 

The court enjoys considerable discretion in making that 

determination in the first instance, and we owe its fact-finding 

appreciable deference. See Boehringer, 778 F.3d at 148; Fed. 

R. Civ. P. 52(a)(6) (“Findings of fact . . . must not be set aside 

unless clearly erroneous.”). Because I see no clear error in the 

district court’s finding, I concur.