Petitioners filed a lawsuit against Perrigo through their outside counsel, Munger Tolles and Foley Lardner. Petitioners alleged that the submission of Perrigo’s new drug application constituted infringement by Perrigo of their patent and that any commercial manufacture, use, sale, offer for sale, or importation of Perrigo’s Generic AndroGel would infringe the patent. Munger Tolles and Foley Lardner certified that the Perrigo Lawsuit was not being presented for any improper purpose as required under Rule 11.  In 2014, the FTC filed an antitrust suit in the District Court against Petitioners, alleging that they maintained an illegal monopoly through the filing of sham patent infringement lawsuits against potential competitors. In early interrogatory responses, Petitioners averred that their outside counsel Munger Tolles and Foley Lardner were responsible for, involved in, or contributed to the decisions to file the Perrigo litigation, but, by the time of trial, they asserted that internal counsel for Abbott Products made the ultimate decision to sue Perrigo in 2011. In ruling against AbbVie after a bench trial, the District Court concluded that internal counsel had actual knowledge that the lawsuit was baseless and that they acted in bad faith. The lawsuit’s sole purpose, the District Court found, was to impose expense and delay on Perrigo. That decision was affirmed.

Subsequently, Respondents filed suit against Petitioners, (i.e. “the King lawsuit”). They alleged antitrust claims under the Sherman Act, arguing that patent-infringement lawsuits including the Perrigo suit delayed market entry of generic AndroGel. Respondents moved for partial summary judgment, arguing that the previous decision had preclusive effect as to whether the Perrigo lawsuit constituted sham litigation. The District Court declined to apply issue preclusion, but held, once again, that the Perrigo litigation was objectively baseless.

After discovery commenced in the King lawsuit, Respondents moved to compel production of 211 documents which they argued revealed Petitioners’ in-house counsel’s views about the baselessness of suing the generic drug manufacturers in the Perrigo lawsuit. Respondents contended that because both the District Court and the Third Circuit had already held that the Perrigo litigation was objectively baseless, any communication by Petitioners’ in-house counsel concerning whether to file that suit constituted a communication in furtherance of fraud, and that such communication would not be protected by the attorney-client privilege due to the crime-fraud exception. Petitioners maintained that the attorney-client privilege applies. The District Court asked Respondents to prepare and provide a list of 100 documents for it to review in camera. Petitioners asked the District Court for permission to appeal that ruling under 28 U.S.C. §1292(b), but their motion was denied.

After reviewing the challenged documents in camera, the District Court ordered Petitioners to produce nineteen documents. The District Judge explained that “it is reasonable to infer from their legal research and analysis that the attorneys knew the filing of the litigation would be a sham,” and thus, since the attorneys were “key decisionmakers who directed the filing of sham litigation,” “it is reasonable to conclude that the attorneys used their own legal research and analysis — the documents at issue here — in furtherance of fraud.”

Petitioners then sought a writ of mandamus, which was denied:

“To prevail on the merits of a mandamus petition, Petitioners must show that no other adequate alternative remedy exists.

“The Supreme Court concluded in Mohawk Industries, 558 U.S. 100 (2009), that post-judgment appeals generally suffice to protect the rights of litigants and ensure the vitality of the attorney-client privilege. That is so because appellate courts can remedy the improper disclosure of privileged material in the same way they remedy a host of other erroneous evidentiary rulings: by vacating an adverse judgment and remanding for a new trial in which the protected material and its fruits are excluded from evidence….

“Petitioners argue that disobeying the orders and accepting sanctions is inadequate because that could trigger a form of sanction that is onerous but not immediately appealable. But they fail to recognize another path that, though burdensome, would allow for immediate appeal: disobeying a court order, being held in contempt, and then appealing the contempt order. Here, Petitioners could refuse to disclose the nineteen documents at issue and face sanctions such that a contempt proceeding could be initiated to ultimately provide the judicial review they seek. By failing to consider that option, at least in this instance, they have failed to show that no adequate alternative remedy exists.

“Mandamus also requires a showing of irreparable injury, yet Petitioners have not demonstrated how the documents at issue in this case, in being disclosed, would irreparably harm them. As Respondents emphasize, the documents, which now are more than a decade old, relate to an expired patent. Several of Petitioners’ declarants are no longer employed by Petitioners. Further, protective orders are available to limit the spillover effects of disclosing sensitive information. The parties agreed to a protective order ensuring that the documents at issue could be used only in connection with this litigation and could not be publicly disclosed. That protective order, as Respondents contend, refutes Petitioners’ argument that the orders compelling document production threaten to expose the losing side in any litigation at all to invasive and unwarranted discovery.

“Because Petitioners fail to show (1) a clear and indisputable abuse of discretion or error of law; (2) a lack of an alternate avenue for adequate relief; and (3) a likelihood of irreparable injury, we will deny the petition for a writ of mandamus.”


In re Abbott Laboratories, 96 F.4th 371 (3d Cir. 2023).