Magistrate Judge James Francis


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Patent infringement suits by Actavis plc and Forest Laboratories LLC (collectively Forest) against makers of generic versions of their Alzheimer’s drug Namenda were settled by means of cash payments from Forest to the alleged infringers and licensing agreements in which the alleged infringers agreed not to market generic Namenda until July 2015. In their putative class suit alleging that the delayed launch provisions in Forest’s settlements were anticompetitive, plaintiffs argued that Forest put privileged communications at issue by advancing certain affirmative defenses and substantive arguments. Thus, plaintiffs sought production of otherwise privileged documents over which Forest allegedly waived protection. Discussing FTC v. Actavis Inc., 133 S. Ct. 2223, and In re Lidoderm Antitrust Litig., the court denied plaintiffs’ motion to compel. At the current stage of discovery, it could not determine that Forest broadly waived attorney-client and work product protection. However, noting the constricted discovery schedule, the court concurred with plaintiffs’ suggestion that Forest disclose any subjective beliefs it will rely on in its defense of suit within two weeks. Forest has the burden of establishing it had not waived privilege.