NOT FOR PUBLICATION

UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

SHIRE LLC, et al., :

: 

Plaintiffs, : Civil Action No. 2:11-cv-03781 (SRC)(CLW)

: (CONSOLIDATED)

v. :

: OPINION

AMNEAL PHARMACEUTICALS LLC, :

et al., :

Defendant. : 

:

___________________________________ :

CATHY L. WALDOR, United States Magistrate Judge.

I. Introduction

Pending before the Court is an informal application by Roxane Laboratories, Inc.

(“Defendant”) to compel Plaintiffs Shire LLC and Shire Development LLC (collectively 

“Shire”) to return or destroy privileged documents produced by co-defendants Johnson Matthey, 

Inc. and Johnson Matthey Pharmaceutical Materials (collectively “JM”). (Docket Entry No. 430, 

“Letter Request”). For the reasons set forth below Defendant’s application is hereby DENIED.

II. Background & Procedural History

On November 1, 2013, Defendant asked the Court to compel Shire to return, sequester, 

or destroy documents produced by JM pursuant to Fed. R. Civ. P. 26(b)(5)(B), Fed. R. Evid. 

502(b), and the clawback procedure set forth in paragraph 16 of the Discovery Confidentiality 

Order (“DCO”). (“Letter Request”). Initially Defendant argued for the return or destruction of 

more than 100 emails and attachments containing confidential information that is subject to the 

attorney-client privilege and work-product protection. (Id. at 2). The parties met and conferred 

narrowing the controversy to five emails and corresponding attachments. These five emails are 

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part of Exhibit 2 attached to Defendant’s letter to the Court dated March 13, 2014. (Docket Entry 

No. 547, “Exhibit 2 Documents”).

II. Discussion 

A. Parties’ Arguments

Defendant asserts that a common-interest or joint-defense privilege exists between the 

defendants in this case and that JM cannot unilaterally waive the privilege without consent from 

the other members of the common-interest community. (Letter Request at 2).

Shire argues that Defendant cannot assert a claim of privilege and that no joint-defense 

privilege exists between JM and Defendant. (Docket Entry No. 433, “Letter Response”). Even if 

a joint-defense agreement was in place, the privilege could be waived by JM alone. (Id.). Here, 

Shire contends that JM intentionally waived the privilege as to these communications when it 

permitted several of its fact witnesses to testify about them. (Id.).

B. Analysis

The attorney-client privilege protects communications between attorneys and 

clients from compelled disclosure. It applies to any communication that satisfies 

the following elements: it must be (1) a communication (2) made between 

privileged persons (3) in confidence (4) for the purpose of obtaining or providing 

legal assistance for the client.

Teleglobe Commc’ns Corp. v. BCE, Inc., 493 F.3d 345, 359 (3d Cir. 2007). “Disclosing a 

communication to a third party unquestionably waives the privilege.” Id. at 361.

The standard for work product doctrine is governed by Fed. R. Civ. P. 26(b)(3) and 

“shelters the mental processes of the attorney, providing a privileged area within which he can 

analyze and prepare his client’s case.” United States v. Nobles, 422 U.S. 225, 238 (1975); United 

Coal Cos. V. Powell Constr. Co., 839 F.2d 958, 966 (3d Cir. 1988). Thus, the rule prevents an 

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adverse litigant from examining “documents and tangible things that are prepared in anticipation 

of litigation.” Fed. R. Civ. P. 26(b)(3).

The Community-of-Interest doctrine allows "attorneys representing different clients with 

similar legal interests to share information without having to disclose it to others." Teleglobe 

Commc’ns Corp., 493 F.3d at 364. If applicable, the doctrine protects communications made 

between attorneys when all members of the community share a “common legal interest” in the 

shared communication." Id. (emphasis added). Thus, to be eligible for the protection, the 

communications must be between two attorneys representing different members of the 

community of interest. Id. It is not an independent privilege, but rather, an exception to the 

general rule that disclosure of a privileged communication to a third-party waives the privilege. 

See, e.g., Cavallaro v. United States, 284 F.3d 236, 250 (1st Cir. 2002) ("The common interest 

doctrine . . . is not an independent basis for privilege, but an exception to the general rule that the 

attorney-client privilege is waived when privileged information is disclosed to a third-party." 

(quotation omitted)). 

The degree of common legal interest required to qualify under the doctrine is the subject 

of some debate, ranging from "substantially similar" to "identical." See, e.g., La. Mun. Police 

Emps. Ret. Sys. v. Sealed Air, 253 F.R.D. 300, 309-10 (D.N.J. 2008) (substantially similar legal 

interests sufficient); Duplan Corp. v. Deering Milliken, Inc., 397 F. Supp. 1146, 1172 (D.S.C. 

1974) (identical interests required). The burden to show the privilege has not been waived, and 

thus, that the doctrine applies, rests with the party resisting disclosure. Hoffmann La Roche, Inc. 

v. Roxane Labs., Inc., 2011 U.S. Dist. LEXIS 50404, 14-16 (D.N.J. May 11, 2011) (citing 

Greene, Tweed of Del., Inc. v. DuPont Dow Elastomers, LLC, 202 F.R.D. 418, 423 (E.D. Pa. 

2001)).

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As a threshold matter the Court notes the following: 1) Defendant was not present at the 

depositions when these communications were marked as exhibits despite having been expressly 

invited to attend; 2) Defendant did not request copies of JM’s production to verify privileged 

documents were not being produced to Shire; 3) none of the communications at issue were 

marked as privileged; and 4) an executed Joint-Defense/Community-of-Interest Agreement has 

not been presented to the Court and the Court assumes that one does not exist. These 

communications are not shared between two attorneys as required by Teleglobe thus ending the 

inquiry as to whether such an exception applies. 493 F.3d at 365, 372.

The Court has reviewed these documents in camera and makes the following findings: 

A. JM00312981

The Court finds that this is not a communication between privileged persons but instead 

an email sent from a non-attorney representative to another non-attorney who subsequently 

shared its contents with JM’s in-house patent counsel William Youngblood (“Youngblood”). The 

mere inclusion of an attorney on a communication does not make it privileged. This is not work 

product because it was not written by an attorney revealing the preparation of a client’s case nor 

does the Court find it to be an informal evaluation of the case written by Defendant’s agent. 

B. JM00313705

The Court finds that this is not a communication between privileged persons for the 

purpose of obtaining or providing legal advice. This is an email from Youngblood to a nonattorney representative of Defendant’s parent company – this is not an attorney-client 

relationship. This document is not work product because it does not contain legal analysis or 

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informal evaluation of the case. Rather it is a request to review and execute a confidentiality 

agreement.1

C. JM00313069-75

The Court notes that JM00313070-75 are not part of Defendant’s motion and finds that 

JM00313069 is not a communication protected by the privilege. It is not a communication 

between privileged persons to obtain legal advice. It is authored by a non-attorney representative 

of JM to a representative of Defendant’s parent company that also copies Defendant’s outside 

counsel and Youngblood. Similarly this is not work product because it does not contain a legal 

analysis nor is it sensitive preparatory work the rule is designed to protect. 

D. JM00312995-96

The Court notes that JM00312996 is an unexecuted document and finds that 

JM00312995 is not a privileged communication because it is not made between privileged 

persons nor is its purpose to obtain legal advice. Rather this is an email authored by Youngblood 

to Defendant’s outside counsel that is copied to a non-attorney third party. The Court finds that 

this is not work product because it is not a legal analysis.

E. JM00313395-97

Here, the Court reviewed a chain of emails between various attorneys at JM and 

Defendant’s outside counsel. As noted at the beginning of this Opinion the Court assumes that a 

Joint-Defense/Community-of-Interest agreement does not exist. The Court finds that this is not 

subject to the attorney-client privilege because it is not a communication between privileged 

persons for the purpose of providing legal assistance. The first email in this chain of messages is 

authored by a non-attorney representative of Defendant’s outside counsel to JM’s in-house patent 

counsel. Nevertheless the presence of a third party waives the privilege. Teleglobe Commc’ns

 

1 Defendants have not produced an executed agreement. 

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Corp. 493 F.3d at 361. This is not work product because it is written by a non-attorney and does 

not provide an informal evaluation of the case that, under the circumstance, should be protected. 

IV. Conclusion

For the reasons set forth above, the undersigned hereby denies Defendant’s application. 

An appropriate order shall follow. 

s/ Cathy L. Waldor

CATHY L. WALDOR

UNITED STATES MAGISTRATE JUDGE

Dated: April 1, 2014

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