In Re Vioxx Products Liability Litigation - Jenner & …IN RE VIOXX PRODUCTS LIABILITY LITIGATION789 Cite as 501 F.Supp.2d 789 (E.D.La. 2007) litigation are not preempted in any respect

789IN RE VIOXX PRODUCTS LIABILITY LITIGATIONCite as 501 F.Supp.2d 789 (E.D.La. 2007)

litigation are not preempted in any respectbecause they do not actually conflict withfederal law. Thus, IT IS ORDERED thatMerck’s Motion for Summary Judgment isDENIED.

,

In re VIOXX PRODUCTS LIABILITYLITIGATION.

MDL No. 1657.

United States District Court,E.D. Louisiana.

Aug. 14, 2007.

As Revised Sept. 4, 2007.

Background: Patients brought productsliability class action, in multidistrict litiga-tion (MDL) court, against pharmaceuticalcompany that manufactured medication forrelieving pain and inflammation. Pharma-ceutical company moved to adopt in partSpecial Master’s Report and Recommen-dations regarding discovery dispute resolu-tion procedures.

Holding: The District Court, Fallon, J.,held that Special Master’s sample resolu-tion process provided adequate proceduralprotections.

Motion granted in part and denied in part.

Federal Civil Procedure O1905

Sample resolution process for discov-ery disputes developed and implementedby Special Master in multidistrict litigationbrought by patients against pharmaceuti-cal company provided adequate proceduralprotections; district court’s individualizedreview of over two million documentswould have been inadequate and potential-ly could have become abuse of discretion.Fed.Rules Civ.Proc.Rule 53, 28 U.S.C.A.

Russ M. Herman, Leonard A. Davis,Herman, Herman, Katz & Cotlar, LLP,New Orleans, LA, for Plaintiff.

Phillip A. Wittmann, Stone PigmanWalther Wittmann, LLC, New Orleans,LA, for Defendant.

ORDER & REASONS

FALLON, District Judge.

THIS DOCUMENT RELATES TO ALLCASES

Before the Court are Special MasterPaul R. Rice’s Report and Recommenda-tions (Rec. Docs. 11566 & 11882) on arepresentative sampling of documents asto which Merck & Co., Inc. has assertedprivilege in this multidistrict litigation(‘‘MDL’’), and Merck’s Motions to Adopt inPart the Special Master’s Report and Rec-ommendations and Merck’s ObjectionsThereto (Rec. Docs. 11729 & 12020), whichhave been filed under seal.

This discovery dispute has dragged onfor over a year and at times has seemedhopelessly endless. Although Merck hasproduced over two million documents inthis MDL, the company has also assertedattorney-client privilege as to approxi-mately 30,000 documents which it contendsneed not be produced. The majority ofthe withheld documents are print-outs ofelectronic communications, primarily inter-nal company e-mails and attachments.Following an initial individualized reviewby the Court of every single withheld doc-ument, and a subsequent decision by theUnited States Court of Appeals for theFifth Circuit, it is the Court’s hope that adetailed expert analysis of a representativesample of these documents can potentiallyresolve all of Merck’s privilege claims andput an end to a time consuming and expen-sive saga that has spiraled out of control in

790 501 FEDERAL SUPPLEMENT, 2d SERIES

this case. Because the administrative andorganizational travails that this Court hasexperienced are sure to recur with increas-ing regularity in similar cases, particularlyat this time, at the dawn of the age ofelectronic discovery, and because the sam-ple resolution process ultimately employedsuggests that all hope may not be lost, theCourt will relate this matter in considera-ble detail.

I. BACKGROUND

This multidistrict products liability liti-gation involves the prescription drugVioxx, known generically as Rofecoxib.Merck, a New Jersey corporation, re-searched, designed, manufactured, market-ed, and distributed Vioxx to relieve painand inflammation resulting from osteoar-thritis, rheumatoid arthritis, menstrualpain, and migraine headaches. On May20, 1999, the Food and Drug Administra-tion approved Vioxx for sale in the UnitedStates. Vioxx remained available to thepublic until September 30, 2004, at whichtime Merck withdrew it from the marketwhen data from a clinical trial indicatedthat the use of Vioxx increased the risk ofcardiovascular thrombotic events such asmyocardial infarctions (heart attacks) andischemic strokes.1

Thereafter, thousands of individual suitsand numerous class actions were filedagainst Merck in state and federal courtsthroughout the country alleging variousproducts liability, tort, failure-to-warn,fraud, and warranty claims. It is estimat-ed that 105 million prescriptions for Vioxxwere written in the United States betweenMay 20, 1999 and September 30, 2004.

Based on this estimate, it is thought thatapproximately 20 million patients have tak-en Vioxx in the United States. On Febru-ary 16, 2005, the Judicial Panel on Multi-district Litigation (‘‘JPML’’) conferredmultidistrict litigation status on Vioxx law-suits filed in federal court and transferredall such cases to this Court to coordinatediscovery and to consolidate pretrial mat-ters pursuant to 28 U.S.C. § 1407. See360 F.Supp.2d 1352.2 Shortly thereafter,the Court appointed committees of counselto represent the parties and discovery inthis litigation commenced.

Discovery has progressed simultaneous-ly on two parallel tracks in this multidis-trict litigation. First, the Plaintiffs’Steering Committee (‘‘PSC’’) and the De-fendants’ Steering Committee (‘‘DSC’’)have been charged with initiating, con-ducting, and coordinating all non-case-spe-cific discovery. In this regard, the PSChas established and organized a documentdepository to house materials produced byMerck and has made these materialsavailable to plaintiffs’ counsel in individualcases. Second, in an effort to streamlinecase-specific discovery in thousands of in-dividual cases, the Court has required ev-ery plaintiff who alleges a cardiovascularinjury to submit to Merck both a PlaintiffProfile Form, which contains certain bio-graphical and medical information, andauthorizations for the release of medicalrecords. Upon receipt of these materials,Merck is then required to provide aMerck Profile Form, which discloses con-tacts Merck has had with plaintiffs’ doc-tors and any other relevant information

1. For a more detailed factual and medicalbackground, see In re Vioxx Prods. Liab. Litig.,––– F.Supp.2d –––– (E.D.La.2007) (denyingMerck’s motion for summary judgment onfederal preemption grounds).

2. Section 1407 provides that ‘‘[w]hen civilactions involving one or more common ques-

tions of fact are pending in different districts,such actions may be transferred to any dis-trict for coordinated or consolidated pretrialproceedings’’ if the JPML determines ‘‘thattransfers for such proceedings will be for theconvenience of parties and witnesses and willpromote the just and efficient conduct of suchactions.’’ 28 U.S.C. § 1407(a).


Merck may have about individual plain-tiffs.

Although this MDL was constituted inearly 2005, many cases involving similarclaims had been previously filed in statecourts throughout the country, including inLouisiana. Some of these cases had beenpending in state court for several yearsprior to the creation of this MDL, andcase-specific discovery was essentiallycompleted in some instances. With theconsent of the parties, several of thesecases were re-filed directly into this MDLso that bellwether trials could also com-mence immediately. Initially, the PSCand DSC were each permitted to designatefor trial five bellwether cases involvingmyocardial infarctions in which case-spe-cific discovery was complete. Each sidewas given two veto strikes. The remain-ing cases were then set for trial on arotating basis, starting with one of theplaintiffs’ selections. To date, the Courthas conducted six bellwether trials (in fiveindividual cases).3

Meanwhile, non-case-specific discoverycontinued. On August 22, 2005, in re-sponse to a PSC request for production,Merck asserted attorney-client privilege ona large number of documents and providedthe PSC with its first MDL privilege log.A revised privilege log was provided onNovember 4, 2005. Shortly thereafter, theCourt ordered Merck to submit for incamera review all documents as to which itclaimed privilege. See Rec. Doc. 1337. Inresponse to that Order, Merck delivered81 boxes to the Court containing approxi-mately 30,000 documents, amounting tonearly 500,000 pages, as to which privilegewas asserted. The documents were notcategorized or grouped together in any

logical or organized fashion. Thus, theCourt proceeded to review each documentindividually. Throughout April of 2006,the Court went through each box and re-moved those documents that it felt wereprivileged and then instructed the partiesto confer on the method by which the PSCwould receive and/or copy the remainingnon-privileged documents.

Merck sought review of the Court’s priv-ilege rulings via a petition for a writ ofmandamus. On May 26, 2006, the UnitedStates Court of Appeals for the Fifth Cir-cuit declined to issue a writ on jurisdiction-al grounds, but suggested that this Court(or its designee) re-examine 2,000 repre-sentative documents, that Merck would se-lect, pursuant to a different review proto-col. See In re Vioxx Prods. Liab. Litig.,2006 WL 1726675 (5th Cir. May 26, 2006).The Fifth Circuit did not rule on the mer-its of any individual privilege ruling, butsimply concluded that this Court shoulddevise a new procedure for reviewing therepresentative documents. Id. at *3.

Pursuant to the Fifth Circuit’s direction,Merck provided this Court with 10 addi-tional boxes containing approximately2,000 documents that Merck believes arerepresentative of all the documents inquestion. On April 25, 2007, after givingnotice and allowing the parties an opportu-nity to be heard, the Court appointed Pro-fessor Paul R. Rice of American Universi-ty’s Washington College of Law as SpecialMaster pursuant to Rule 53 of the FederalRules of Civil Procedure. See Rec. Doc.10872. The Court requested that SpecialMaster Rice review the 2,000 representa-tive documents, as well as approximately600 additional documents selected by the

3. For further details concerning the manage-ment and progress of this MDL, see In reVioxx Prods. Liab. Litig., 478 F.Supp.2d 897(E.D.La.2007) (discussing the use of directfiling in this multidistrict litigation) and In re

Vioxx Prods. Liab. Litig., 239 F.R.D. 450(E.D.La.2006) (denying the plaintiffs’ motionfor certification of a nationwide personal inju-ry class action).


PSC and believed to be relevant to upcom-ing trial preservation depositions, andmake recommendations as to whether ornot Merck’s claims of privilege should beupheld. On May 1, 2007, the Court alsoappointed Mr. Brent B. Barriere of thefirm Phelps Dunbar LLP as Special Coun-sel to assist the Special Master by provid-ing logistical support and local facilitiesand by managing the Special Master’s op-erating account. See Rec. Doc. 10908.The Court confidently made both of theseappointments based on the considerableexperience these individuals were able tobring to this dispute and in light of theirimpeccable reputations.4

Professor Rice graduated from the WestVirginia University College of Law in 1968with high honors and then clerked for theHonorable Herbert S. Boreman at theUnited States Court of Appeals for theFourth Circuit. Following his clerkship,he returned to Yale Law School and re-ceived an LL.M. in 1972, and has beenteaching at American University’s Wash-ington College of Law since 1974. Profes-sor Rice is widely recognized as a leadingscholar on the law of evidence, and partic-ularly attorney-client privilege, havingpublished several respected treatises andnumerous articles and papers on the topic.Professor Rice also has considerable prac-tical experience, having served as SpecialMaster or Special Counsel in the followingcomplex cases: from 1978 to 1981 heserved as Special Master in United Statesv. AT & T, No. 74–1698 (D.D.C.); from1981 to 1983 he served as Special Masterin In re Amoxicillin Patent & AntitrustLitigation, MDL No. 328 (D.D.C.); from1981 to 1982 he served as Special Masterin Southern Pacific Communication Co. v.AT & T, No. 78–0545 (D.D.C.); and from

2002 to 2004 he served as Special Counselin In re Microsoft Corp. Antitrust Litiga-tion, MDL No. 1332 (D.Md.). In thesevarious posts Professor Rice has beencalled upon to, among other things, reviewthousands of attorney-client privilegeclaims.

Mr. Barriere graduated from TulaneLaw School in 1981 with high honors andis now a partner at Phelps Dunbar LLP,one of the oldest and most respected lawfirms in New Orleans and, indeed, acrossthe region and the nation. Mr. Barriererepresents clients in a wide variety of com-mercial disputes and has been named oneof Louisiana’s top ten litigators by theNational Law Journal. He has also beenrecognized by The Best Lawyers in Amer-ica and Chambers USA publications.Moreover, his firm has the administrativecapability to support this endeavor.

On July 2, 2007, Special Master Riceand Special Counsel Barriere completedtheir review of the initial representativedocuments and delivered to the Court theSpecial Master’s Report, including recom-mendations for each individual document(Appendix I), and the full record createdduring the sample resolution process (Ap-pendix II). The Special Master’s recom-mendations in Appendix I are divided intotwo parts: Part A addresses Merck’s 2,000sample documents and Part B addressesthe 600 documents selected by the PSC. Inhis Report, the Special Master describesthe sample resolution process that wasemployed in this case:

Immediately following the appoint-ment of Special Master Rice and SpecialCounsel Barriere, two meetings wereheld with the parties on May 4, 2007 inWashington, D.C. and May 11, 2007 in

4. Although the parties consented to these ap-pointments, Special Master Rice and SpecialCounsel Barriere nevertheless provided affi-davits pursuant to Rule 53(b) disclosing that

there were no grounds for their disqualifica-tion under 28 U.S.C. § 455 that would pre-vent them from performing their duties. SeeRec. Docs. 11096 & 11097.


New Orleans, Louisiana. The SpecialMaster discussed a range of problemsthat he had identified with the privilegelog and some of the privilege claimsasserted on documents that he had ex-amined. He discussed most of theseproblems with both plaintiffs’ and de-fendant’s counsel present. With theconsent of plaintiffs’ counsel, when con-fidential information about particulardocuments was addressed, ex parte dis-cussions were held with defendant’scounsel. Among the problems dis-cussed were concerns about inadequatedescriptions in the privilege log, errone-ous descriptions of e-mail threads in theprivilege log, the need for documenta-tion of the elements of each claim ofprivilege or work product immunity, is-sues of confidentiality and the need forinternal corporate policies about pre-serving confidentiality plus an affidavitfrom a knowledgeable person that thoseconfidentiality policies are communicat-ed throughout the company and scrupu-lously followed, and the general absenceof supporting affidavits for all privilegeclaims.

As previously noted, approximately2,000 sample documents (contained in 10boxes) had been selected by Merck forreview in this process. Because deposi-tions sought by Merck were awaiting theresolution of privilege claims relating tospecific individuals, the plaintiffs werepermitted to identify 600 additional doc-uments to which immediate attentionneeded to be given. These were addedto the universe of samples upon whichthe Special Master would initially makerecommendations to Judge Fallon.

The examination process began imme-diately. After the Special Master hadexamined the Merck selected documentsin the ten boxes, and subsequently re-examined them as he entered his initialassessments or tentative decisions in theword processor, the Special Counsel ex-

amined the decisions of the Special Mas-ter. Differences of opinion were dis-cussed over joint re-examinations of thedocuments and the Special Master madea final tentative decision. Paralegals en-tered the decisions and reasons in anexcel spreadsheet created for this pro-cess. During the data entry processconflicts in decisions on the same orsimilar types of documents were identi-fied and the Special Master re-examinedthose collective decisions still again.These final tentative decisions identifiedas ‘‘initial assessments’’ were issued toMerck and the plaintiffs’ counsel in 5sets—each set containing initial assess-ments for two boxes—between May 17and June 5, 2007.

Following issuance of the first set ofinitial assessments, Merck was giventwo weeks to respond because of thenovelty of the process and the fact thatadditional issues had to be briefed.These additional issues were the confi-dentiality issues identified by the SpecialMaster and a new theory announced byMerck for expanding the scope of theattorney-client privilege protection.Thereafter as each set of initial assess-ments were issued, Merck had one weekto respond with objections and support-ing evidence that had not been suppliedin the initial submission.

During this process, the Special Mas-ter and Special Counsel promulgatedsubstantive guidelines that they followedin the resolution of privilege claims toensure consistency in decisions by eachindividual and between the two. Whilethese guidelines are discussed later inthis report, it is important to note thatthey were disseminated in advance ofthis report to facilitate litigants’ under-standing of our recommendations.

Because of the exigencies presented inthis case, the Special Master agreed tocomplete his initial review of the docu-ments contained in the 10 boxes by the


end of May. While this was accom-plished, it was not until June 5, 2007that the entire sample could be screenedby Special Counsel Barriere, data inputby the staff of paralegals, headed byNancy Heater, proof read by BarbaraArras, conflicts resolved by the SpecialMaster, and the initial assessment is-sued electronically to the parties. With-out the assistance of these individualsthrough exceptionally long days, nights,and weekends, this expedited undertak-ing would not have been possible.

When Merck disputed an initial as-sessment, the paralegals pulled the rele-vant documents and the Special Masterreviewed them for the third or fourthtime. When decisions were changed inlight of the subsequent documentationand explanations from Merck, those doc-uments were also examined again by theSpecial Counsel. The recommendationsoffered in this report are the culmina-tion of that laborious process.

See Special Master’s Report at 3–4 (Rec.Doc.11566–2).

On July 3, 2007, the Court issued anOrder filing the Special Master’s Reportand recommendations into the record andallowing fifteen days during which any ob-jections could be filed. See Rec. Doc.11566.5 Subsequently, with the approval

of the Court, Merck sent a letter to theSpecial Master on July 16, 2007 requestingclarification on certain alleged factual er-rors and inconsistencies in his recommen-dations. The Special Master re-examinedthese documents and has submitted a sup-plemental report and amended recommen-dations addressing Merck’s concerns.6 OnAugust 2, 2007, the Court entered theSpecial Master’s supplemental report andAmended Appendix I into the record andallowed ten days for any additional objec-tions to be filed. See Rec. Doc. 11882.While the PSC makes no objection to theSpecial Master’s recommendations, Merckhas timely filed a number of objections.

II. SPECIAL MASTER’S REPORT

In addition to providing written recom-mendations on a document-by-documentbasis, Special Master Rice issued a twenty-one page Report that discusses the law ofattorney-client privilege both in generaland in the context of this multidistrictlitigation. This comprehensive discussionof the law demonstrates the Special Mas-ter’s expertise in the field and provides aframework for understanding his individu-al recommendations on each representa-tive document. Accordingly, the Courtwill now reproduce the substantive portionof the Special Master’s Report, whichreads as follows: 7

5. Appendix II has been filed into the recordunder seal and contains the following materi-als: Orders of the Court, the Special Master’sinitial assessments of privilege claims,Merck’s responses to the initial assessments,correspondence discussing concerns about re-dacted responses provided to the PSC, briefsand other supporting material filed by Merck,order of Judge Higbee and sealed transcriptof Joanne Lahner’s testimony, e-mail corre-spondence with the parties, and other writtencorrespondence.

6. The Court also referred to the Special Mas-ter a related matter concerning whether ornot certain documents Merck provided tothird-party consultants are privileged. See

Rec. Docs. 4849 & 11826. The Special Mas-ter has delivered his Second Report and Rec-ommendations on this issue, which the Courtwill address in a separate order.

7. The Court has taken the liberty of modifyingthe numbering of the various sections of theSpecial Master’s Report to ensure that theyconform with the headings used in this Order& Reasons. The numbering of the footnoteshas also necessarily been modified, such thateach footnote’s number has increased by afactor of six. For example, footnote numbertwo in the original Report is footnote numbereight herein, footnote number three in theoriginal Report is now footnote number nine,etc. Other than some additional cosmetic


A. Basics of the Attorney–ClientPrivilege

The attorney-client privilege is an ex-ception to the general rule that the lawis entitled to every man’s evidence. Theprivilege protects communications fromthe client to the attorney, and respon-sive communications from the attorneyto the client. A widely quoted definitionof the attorney-client privilege appearsin United States v. United Shoe Ma-chinery Corp., 89 F.Supp. 357, 358–59(D.Mass.1950):

The privilege applies only if (1) theasserted holder of the privilege is orsought to become a client; (2) theperson to whom the communicationwas made (a) is a member of the barof a court, or his subordinate and (b)in connection with this communicationis acting as a lawyer; (3) the commu-nication relates to a fact of which theattorney was informed (a) by his client(b) without the presence of strangers(c) for the purpose of securing primar-ily either (i) an opinion on law or (ii)legal services or (iii) assistance insome legal proceeding, and not (d) forthe purpose of committing a crime ortort; and (4) the privilege has been (a)claimed and (b) not waived by theclient.

This definition was adopted by the FifthCircuit Court of Appeals in 1975 in In reGrand Jury Proceedings, 517 F.2d 666,670 (5th Cir.1975).

Many other courts have adopted thedefinition of the privilege in ProposedRule 502(b) of the Federal Rules of Evi-dence that was never enacted:

General rules of privilege. A clienthas a privilege to refuse to discloseand to prevent any other person fromdisclosing confidential communicationsmade for the purpose of facilitatingthe rendition of professional legal ser-vices to the client, (1) between himselfor his representative, (2) between hislawyer and the lawyer’s representa-tive, (3) by him or his lawyer to alawyer representing another in a mat-ter of common interest, (4) between arepresentative of the client or be-tween the client and a representativeof the client, or (5) between a lawyerrepresenting the client.

Five elements are common to all defini-tions of the attorney-client privilege: (1)an attorney, (2) a client, (3) a communi-cation, (4) confidentiality anticipated andpreserved, and (5) legal advice or assis-tance being the purpose of the communi-cation.

For the lawyer’s responsive communi-cation, the accepted theory has beenthat only a derivative protection is af-forded. The responsive communicationfrom the attorney to the client is pro-tected only to the extent that the re-sponse reveals the content of the client’sprior confidential communication. Manyjudges, however, tend to interpret thisrestriction as giving a protection to theattorney’s advice (either regardless ofwhat it reveals from prior communica-tions from the client, or on the assump-tion that it will always disclose suchconfidences) and enforcing the deriva-tive rule only for factual communications(for example, the lawyer revealing to theclient what third parties had told him).8

modifications, the following is a complete re-production of the substantive portion of theSpecial Master’s Report. As noted, the origi-nal version of the Report was filed into thepublic record on July 3, 2007 and may beconsulted in its original form and in its entire-ty. See Rec. Doc. 11566–2.

8. See, e.g., In re LTV Securities Litig., 89F.R.D. 595, 602–03 (N.D.Tex.1981) (‘‘In theo-ry, the client states facts and the attorneygives advice; and in the theory, if the adviceto the client does not reveal what the clienttold him it is not privileged TTT Whatever theconceptual purity of this ‘rule,’ it fails to dealwith the reality that lifting the cover from the


Here, we attempted to follow the wis-dom of the Court in Garner v. Wolfin-barger, 430 F.2d 1093, 1096 n. 7 (5thCir.1970), where it was stated that since‘‘[t]he parties make no distinction be-tween the client’s communications to theattorney and the attorney’s communica-tions to the client, TTT it is not necessarythat we do so.’’ While we generallyignored the distinction, we applied it intwo instances: (1) when the attorneyhad conveyed information to the clientthat the attorney had acquired fromthird parties (e.g., previously publishedarticles and discussions with third par-ties like a U.S. attorney), and (2) whenin-house lawyers were electronically ren-dering their advice (in the form of lineedits) on a non-privileged attachment tonon-privileged client communicationsand then Merck claimed that the non-privileged attachment became privilegedbecause of the advice its lawyers choseto place on it.9 As further explainedlater in this report, we denied thoseclaims because Merck cannot be permit-ted to manipulate the discovery process

by the manner in which their in-houseattorneys render their advice.

It is well-accepted, of course, that theattorney-client privilege applies to cor-porations. See Upjohn Co. v. UnitedStates, 449 U.S. 383, 101 S.Ct. 677, 66L.Ed.2d 584 (1981); Garner v. Wolfin-barger, 430 F.2d 1093 (5th Cir.1970).The fictitious legal entity is the clientthat cannot speak, but that entity ispersonified by the employees who repre-sent its interests and speak on its behalf.Consequently, it protects communica-tions between those employees and cor-porate legal counsel on matters withinthe scope of their corporate responsibili-ties, as well as communications betweencorporate employees in which prior ad-vice received is being transmitted tothose who have a need to know in thescope of their corporate responsibili-ties.10

B. Legal Advice Must be the Pri-mary Purpose

In the Vioxx action, one element ofthe privilege has been particularly trou-

advice will seldom leave covered the client’scommunication to his lawyer. Nor does itrecognize the independent fact gathering roleof the attorney. Finally enforcement of therule would be imprecise at best, leading touncertainty as to when the privilege will applyTTT A broader rule TTT protects from forceddisclosure any communication from an attor-ney to his client when made in the course ofgiving legal advice TTT [W]e think the broaderrule better serves the interests underlying theattorney-client privilege and is not inconsis-tent with the principle that the attorney-clientprivilege should be applied narrowly.’’); Unit-ed States v. Mobil Corp., 149 F.R.D. 533, 536(N.D.Tex.1993) (‘‘The attorney-client privilegeprotects two related, but different, communi-cations: (1) confidential communicationsmade by a client to his lawyer for the purposeof obtaining legal advice; and (2) any com-munication from an attorney to his clientwhen made in the course of giving legal ad-vice, whether or not that advice is based onprivileged communications from the client.’’).

See generally PAUL R. RICE, 1 ATTORNEY–CLIENT

PRIVILEGE IN THE UNITED STATES, § 5:2 (ThomsonWest 2d ed.1999).

9. Theoretically, the fact that Merck regularlyrevealed on the face of discoverable commu-nications among non-legal personnel thatcopies of the communications had also beensent to in-house counsel destroyed the confi-dentiality of the initial communications uponwhich the derivative protection for the law-yers’ responses is dependent. As a conse-quence, Merck could have been found to havewaived the privilege protection for all respon-sive communications. We chose, however, toignore this ‘‘conceptual purity’’ and grantedthe privilege to the extent that Merck pro-duced attachments without the lawyers’ su-perimposed electronic comments.

10. See generally PAUL R. RICE, 1 ATTORNEY–

CLIENT PRIVILEGE IN THE UNITED STATES, §§ 4:11–14 (Thomson West 2d ed.1999).


blesome. That is the requirement thatlegal advice or assistance must besought and given for the privilege toapply. While this element is often pro-blematic vis-a-vis internal corporatecommunications, the problem is exacer-bated here because of the uniquely regu-lated nature of the drug industry inwhich Merck is involved and the rolethat in-house counsel has been given inthe Merck decision-making process rela-tive to the publication of corporate gen-erated communications.

It is often difficult to apply the attor-ney-client privilege in the corporate con-text to communications between in-house corporate counsel and those whopersonify the corporate entity becausemodern corporate counsel have becomeinvolved in all facets of the enterprisesfor which they work. As a consequence,in-house legal counsel participates inand renders decisions about business,technical, scientific, public relations, andadvertising issues, as well as purely le-gal issues.

[I]ntent problems arise most frequent-ly in a corporate or other businesscontext when the attorney is in-housecounsel. In-house counsel often haveresponsibilities which extend beyondthe mere rendering of legal advice—for example, in-house counsel mightalso act as an executive vice presidentwith designated business responsibili-ties. The responsibilities as vice-pres-ident and lawyer may overlap signifi-cantly and the purpose of variouscommunications with others within theorganization may begin to blur.Many courts fear that businesses willimmunize internal communications

from discovery by placing legal coun-sel in strategic corporate positionsand funneling documents throughcounsel (viz, addressing documents tothe lawyers with copies being sent tothe employees with whom communica-tions were primarily intended). As aresult, courts require a clear showingthat the attorney was acting in hisprofessional legal capacity beforecloaking documents in the privilege’sprotection.11

The intent problem relative to the ele-ment of legal advice is usually focusedon the client, because the attorney-clientprivilege belongs to the client, and theclient cannot reasonably be held respon-sible for the type of assistance the attor-ney might voluntarily provide. This dis-tinction, however, is only compelling inthe context of an individual client andhis retained attorney. In the corporatecontext where in-house counsel is bothan employee/agent of the client, as wellas the client’s attorney, it has no mean-ingful application. No less than anyother agent of the corporation, in-houseattorneys personify the entity and theentity must assume responsibility fortheir actions that are reasonably withinthe scope of their corporate responsibili-ties. See In re CFS–Related SecuritiesFraud Litigation, 223 F.R.D. 631(N.D.Okla.2004) (‘‘Business advice, unre-lated to legal advice, is not protected bythe privilege even though conveyed byan attorney to the client.’’). Conse-quently, in the context of Merck’s privi-lege claims we had to determine thepurpose behind both the seeking of theassistance from in-house counsel and theresponsive services that were renderedby in-house counsel.12

11. PAUL R. RICE, 1 ATTORNEY–CLIENT PRIVILEGE IN

THE UNITED STATES, § 7:2, pp. 24–25 (ThomsonWest 2d ed.1999).

12. In the few communications that were toand from Merck outside counsel (Hughes

Hubbard & Reed), we assumed that legal ad-vice was being sought and given unless thecontent of the communications indicated oth-erwise. We thought this logical inferencewas justified absent evidence of a continuingrelationship between the corporation and the


This problem of determining the typeof services being rendered by in-housecounsel has been exacerbated by theadvent of e-mail that has made it soconvenient to copy legal counsel on ev-ery communication that might be seenas having some legal significance atsome time, regardless of whether it isripe for legal analysis.13 As a conse-quence, counsel is brought into businesscommunications at a much earlier stagethan she was in the past when communi-cations were through hard-copy memo-randa. This, of course, has been benefi-cial for corporations because the lawyersare some of the most intelligent andinformed people within corporations.Lawyers not only help corporate clientsavoid legal problems before they arise,their business, technical, scientific, pro-motional, and public relations judgmenthas frequently proven invaluable. Inaddition, because they are part of aword crafting profession, more oftenthan not, they are excellent writers andeditors. The benefit from this expandeduse of lawyers, however, comes at a cost.This cost is in the form of differentiatingbetween the lawyers’ legal and businesswork when the attorney-client privilegeis asserted for their communicationswithin the corporate structure. Theprivilege is only designed to protectcommunications seeking and renderinglegal services.

Legal counsel does not always render,and is not always expected to render,

exclusively legal assistance. Often busi-ness advice needs to be mixed with legaladvice so that the legal advice is fullyunderstood and followed by the client.Similarly, when legal documents are re-viewed by a lawyer, it is common for thelawyer to correct grammatical mistakesand propose alternative language thatwill best serve the client’s interests.When these non-legal services are mixedwith legal services it does not render thelegal services any less protected by theprivilege. In fact, they both are protect-ed when they are inextricably inter-twined.

The test for the application of theattorney-client privilege to communica-tions with legal counsel in which a mix-ture of services are sought is whethercounsel was participating in the commu-nications primarily for the purpose ofrendering legal advice or assistance.Therefore, merely because a legal issuecan be identified that relates to on-goingcommunications does not justify shield-ing them from discovery. The lawyer’srole as a lawyer must be primary to herparticipation. As explained by the courtin Hercules Inc. v. Exxon Corp., 434F.Supp. 136, 147 (D.Del.1977), ‘‘[o]nly ifthe attorney is ‘acting as a lawyer’—giving advice with respect to the legalimplications of a proposed course of con-duct—may the privilege be properly in-voked. In addition, if a communicationis made primarily for the purpose of

law firm in the company’s business affairs.See generally PAUL R. RICE, 1 ATTORNEY–CLIENT

PRIVILEGE IN THE UNITED STATES, § 7:28, pp.113–14 (Thomson West 2d ed. 1999) (‘‘Ap-parently on the basis of probability, somecourts operate under a presumption that aclient who consults outside counsel with nonon-legal responsibilities to the client (e.g.,holding a corporate office) sought legal advicefrom that attorney. Although not clear fromtheir opinions, the courts appear to apply thispresumption to both the client’s purpose in

consulting with the attorney—to obtain adviceor assistance—and the nature of the advicesought—legal as opposed to business or othertypes of advice. The status of the attorney inrelation to the client (outside rather than in-house) establishes these facts by a prima faciestandard.’’).

13. PAUL R. RICE, 1 ATTORNEY–CLIENT PRIVILEGE IN

THE UNITED STATES, § 7:2.1, pp. 156–61, E-mailtechnology changes everything (Thomson West2d ed. 1999 & Supp.2007).


soliciting legal advice, an incidental re-quest for business advice does not vitiatethe attorney-client privilege.’’

While this expanded role of legalcounsel within corporations has in-creased the difficulty for judges in rul-ing on privilege claims,14 it has concur-rently increased the burden that mustbe borne by the proponent of corporateprivilege claims relative to in-housecounsel. The burden of persuasion on

all elements of claims privileges is exclu-sively the proponent’s.15

In this regard, it should be noted thatthe number of lawyers or non-lawyers towhom a communication was disseminat-ed is not dispositive. A communicationcould be to several lawyers and one non-lawyer and lose its primary legal pur-pose gloss if the non-lawyer were sentthe communication for non-legal pur-poses. The idea of primary purpose is a

14. See, e.g., Lugosch v. Congel, 2006 WL931687, at *14 (N.D.N.Y. Mar.7, 2006) (‘‘Be-cause of the duality of the advice, a courtmust assume the very complicated task ofinquiring into the subject matter of the com-munications in order to determine its truecharacterTTTT To this extent, a court mayhave to parse not only the words but theirintent in order to glean the authentic purposeof the communication.’’); MSF Holding, Ltd.v. Fiduciary Trust Co. Int’l, 2005 WL3338510, at *1 (S.D.N.Y. Dec. 7, 2005) (‘‘In-house counsel often fulfill the dual role oflegal advisor and business consultantTTTT Ac-cordingly, to determine whether counsel’s ad-vice is privileged, ‘we look to whether theattorney’s performance depends principallyon [her] knowledge of or application of legalrequirements or principles, rather than [her]expertise in matters of commercial prac-tice.’TTT In this case, the analysis is compli-cated slightly by the fact that the businessdecision of whether to honor the letter ofcredit necessarily occurs against the back-ground of any legal obligation to do soTTTT

Nevertheless, the e-mails at issue here reflectthe exercise of a predominantly commercialfunction. Susan Garcia, the author of thecommunications and the FTCI’s Senior VicePresident and Deputy Corporate Counsel,never alluded to a legal principle in the docu-ments nor engaged in legal analysis. In-stead, she collected facts just as any businessexecutive would do in determining whetherto pay an obligation. In doing so, she evi-dently relied on her knowledge of commer-cial practice rather than her expertise in thelaw. The documents are therefore not privi-leged.’’); Heaton v. Monogram Credit CardBank of Georgia, 2004 WL 515760, *5, 2004U.S. Dist. LEXIS 4065, *15–16 (E.D.Ga. Mar.16, 2004) (‘‘The FDIC correctly notes that theprivilege is applicable to confidential commu-

nications made for the primary purpose ofsecuring a legal opinion, services, or assis-tance in a legal proceeding. Although theFDIC correctly asserts that the privilege alsoextends to advice or opinions of the attorney,it appears that the FDIC requests and re-ceives opinions and advice from attorneys inthe normal course of its business. As part ofits daily business activities, the FDIC’s legalstaff reviews applications for federal depositinsurance. In addition, the FDIC createsregulations and statutes. Although the FDICcontends that each document sought by theplaintiff embodies advice, legal opinions, orconfidential communications, because the le-gal staff is inextricably entwined with thedaily business activities of the FDIC, arguablymany of the FDIC’s daily business documentscould contain such information. However,after reviewing the documents in camera, thisCourt has determined that the primary pur-pose of most of the documents was not tosecure legal opinions, services, or assistancein a legal proceeding. Instead, the primarypurpose of the communications involved thedaily business activities of the FDIC.’’).

15. ‘‘The attorney-client privilege is an excep-tion to the general rule that the law is entitledto every man’s evidence. Therefore, courtsconstrue the privilege narrowly, and place theburden of establishing each element of theprivilege by a preponderance of the evidenceon the proponent, regardless of whether theproponent is the client, the client’s attorney,or a third party. ‘Neither the existence of anattorney-client relationship nor the mere ex-change of information with an attorney makeout a presumptive claim.’ ’’ PAUL R. RICE, 2ATTORNEY–CLIENT PRIVILEGE IN THE UNITED STATES,

§ 11:9, pp. 78–79 (Thomson West 2ded.1999).


bit like a prior inconsistent statement.No matter how many consistent state-ments you have made, the inconsistentstatement still has probative value rela-tive to credibility. If the primary pur-pose is mixed, it does not become lessmixed because of the number of onetype of recipient over another. To besure, this could be evidence of primacy,but it also could be little more than adirect distribution to lawyers who other-wise would have indirectly received thesame communication under different cir-cumstances. Factual questions like thiswere what Merck was expected to ex-plain and document through affidavits, ifnecessary, from individuals with person-al knowledge of the communications inquestion. This type of evidence, howev-er, was not forthcoming in Merck’s re-sponses to our tentative denials of theirclaims. The Special Master was onlyprovided with explanations from Merck’sattorneys.16 This, in part, may havebeen due to Merck’s reliance on an argu-ment about the pervasive regulation ofthe drug industry and legal counsel’sinherent role in that process.

C. ‘‘Pervasive Regulation’’ TheoryMerck has argued that because the

drug industry is so extensively regulatedby the FDA, virtually everything amember of the industry does carries po-tential legal problems vis-a-vis govern-ment regulators. In support of itsclaim, Merck submitted hundreds of

pages of materials consisting of a brief;a Declaration of Joanne Lahner, Assis-tant General Counsel for Merck withfive exhibits; a copious Medical/LegalReference Manual by which Merck oper-ates; and an article published in theFood and Drug Law Journal in whichthe pervasive nature of governmentalregulation was explored.17 In additionto these extensive submissions, we wereprovided and read a transcript of a de-position of Joanne Lahner taken in oneof the New Jersey Vioxx actions.18

Through these voluminous materials, wehave come to appreciate how servicesthat initially appear to be non-legal innature, like commenting upon and edit-ing television ads and other promotionalmaterials could, in fact, be legal advicewithin the context of the drug industry.However, that does not resolve the ques-tion of whether legal advice was theprimary purpose behind comments andedits by Merck’s in-house lawyers ofspecific scientific reports, articles ac-cepted for publication in noted journals,and research proposals.

Without question, the pervasive na-ture of governmental regulation is a fac-tor that must be taken into accountwhen assessing whether the work of thein-house attorneys in the drug industryconstitutes legal advice, but those drugcompanies cannot reasonably concludefrom the fact of pervasive regulationthat virtually everything sent to the le-gal department, or in which the legal

16. One of Merck’s attorneys, Charles Cohen,informed us that his representations in mate-rials filed in response to our tentative rulingswere based on either his personal knowledgeor information supplied to him by individualswithin the company who were privy to thecommunications and possessed knowledge ofthe reasons for their creation.

17. William W. Vodra, Nathan G. Cortez &David E. Korn, The Food and Drug Adminis-tration’s Evolving Regulation of Press Releas-

es: Limits and Challenges, 61 F.D.L.J. 623(2006).

18. In re Vioxx, Superior Court of New Jersey,Case No. 619, Sept. 15, 2006, before JudgeCarol Higbee. By Order dated June 19, 2007,Judge Higbee also provided the Special Mas-ter and Special Counsel with the sealed por-tion of the deposition of Joanne Lahner takenby the Judge ex parte and in camera onSeptember 15, 2006.


department is involved, will automatical-ly be protected by the attorney-clientprivilege. While such an argument isintriguing because it would minimize thetime and expense involved in both corpo-rations asserting and documenting privi-lege claims and judges ruling upon thoseclaims, the theory is unrealistic.

Accepting such a theory would effec-tively immunize most of the industry’sinternal communications because mostdrug companies are probably structuredlike Merck where virtually every com-munication leaving the company has togo through the legal department for re-view, comment, and approval. The factthat the industry is so pervasively regu-lated does not justify dispensing witheach company’s burden of persuasion onthe elements of attorney-client privilege.Indeed, many of the documents that weexamined appeared to reflect far moretechnical, scientific, promotional, mar-keting, and general editorial input fromlawyers than would be expected of alegal department primarily concernedabout legal advice and assistance.

While we acknowledge that in many ofthese instances what appears not to belegal assistance may, in fact, fall withinthe protection of the attorney-clientprivilege, it was Merck’s burden to suc-cessfully establish this on a document-by-document basis.19

In its responses to our tentative rul-ings, Merck appears to have miscon-strued many of the instances in whichwe denied privilege claims in our tenta-tive recommendations. Often, in theseinitial assessments we acknowledgedthat legal advice was being soughtthrough communications to the legal de-partment, in general, and Joanne Lah-ner,20 in particular, but denied the privi-lege claims for the lawyers’ responsesbecause of our concern that the scope of‘‘assistance’’ had gone beyond legal. Wedenied claims in anticipation that Merckwould provide document-by-documentexplanations by the authors of how theprimacy of services being rendered wasstill legal in nature. It must be remem-bered that in this action, inconsistentwith practices and procedures in all oth-

19. Drawing an analogy to a more traditionalcontext where legal advice and assistance isoften rendered, the comments of lawyers inthe communications that we examinedseemed a bit like a real estate settlementattorney communicating with her client whois purchasing a home about matters relatingto landscaping or color choices for the exteri-or of the building. Such details might berelevant to legal advice if the client werepurchasing an historic building, but normallywould not be considered legal assistance wor-thy of protection by the attorney-client privi-lege. The relationship of the comments by in-house counsel to the services they are alleged-ly rendering in this highly regulated drugindustry must generally be explained byMerck on a document-by-document basis.

20. Ms. Lahner is a Vice President & AssistantGeneral Counsel in the Office of the GeneralCounsel of Merck & Co., Inc. Within theMerck organization she has rendered servicesrelating to regulatory and product liability

matters and has been the primary regulatorylawyer for Vioxx since 1998. In the variouspositions she has held within the companysince 1992, she has served on a number ofcommittees responsible for ensuring compli-ance with regulatory schemes. She has been,and continues to be, a central figure in thescreening of publications for compliance withMerck policies and FDA regulations prior totheir dissemination. She has the power tostop publications that she does not find to belegally acceptable by making ‘‘mandatorycomments’’ on drafts that must either be com-plied with or her concerns otherwise satisfied.In her review of articles, letters, reports,memoranda, agendas, labels, contracts, andproposals, and based on her broad regulatoryexperience, she proposes scientific, technical,legal, editorial, and grammatical revisionswith occasional commentary. See Declara-tion of Joanne Lahner (June 1, 2007); Merck& Co., Inc.’s Background Submission Con-cerning Privilege (June 4, 2007).


er cases in which we have participated,Merck had not filed a single piece ofevidence to support individual privilegeclaims and provided no independent ex-planations of how individual documentswere providing legal assistance in ahighly regulated industry. As a conse-quence, like Judge Fallon before us, weinitially were required to rule on privi-lege claims with nothing before us toexplain the nature of the documents be-ing examined in camera and how theelements of the attorney-client privilegewere satisfied.

Ultimately meeting their burden,Merck filed responsive briefs to our rec-ommended denials of privilege claimswith explanations of the nature of indi-vidual documents and how they fit with-in the scope of legal assistance that in-house counsel would be expected to pro-vide in a heavily regulated industry.This resulted in many claims initiallydenied in the tentative recommendationsbeing changed. Had these explanationsbeen provided earlier, the sample pro-cess would have been much less costlyand time-consuming. Indeed, the sam-ple process itself would likely have beenunnecessary had this information beenpresented to Judge Fallon in April 2006before he first examined and ruled uponthe 30,000 Merck documents claimed tobe privileged.21

In attempting to make an assessmentof the nature of a lawyer’s services, wegenerally concluded that when lawyersare examining and commenting upon a

legal instrument, like a patent applica-tion, contract for a study, or the reten-tion of experts, lawyers historically haveassisted with clarity, grammar, consis-tency, and organization. We had a par-ticular problem, however, when lawyersmade extensive grammatical, editorial,and word choice comments on non-legaltype communications like scientific re-ports, articles, and study proposals. Of-ten, paragraphs of a report were deletedand new materials were added. Wecould not see the legal significance ofthese comments and changes and insist-ed that Merck explain how the lawyerswere primarily rendering legal advice onthe document as a whole. Of course,when only portions of a lawyer’s commu-nications were excised, each commentwas judged on its own merits relative toits legal nature.22

When warning letters were receivedby Merck from the FDA, in which al-leged violations of FDA regulationswere cited, we accepted the argumentthat the company’s preparation of itsresponses to those warnings were theequivalent of preparing pleadings in alegal proceeding. As a consequence, werecommended the granting of the privi-lege to (1) the attorney’s drafts of thoseresponses, (2) communications in whichthe attorney sought information fromcorporate employees in her efforts toprepare those drafts, and (3) the respon-sive comments solicited from the corpo-rate employees on the drafts. Followingthe trigger of the warning letter,23 every

21. By the time that the resolution of privilegeclaims was delegated to the Special Master,the volume of documents claimed to be privi-leged had increased to 60,000.

22. The primary purpose doctrine can focus onthe communication as a whole or on segrega-ble portions of communications if the propo-nent chooses to redact rather than make auniversal claim. PAUL R. RICE, 1 ATTORNEY–

CLIENT PRIVILEGE IN THE UNITED STATES, § 7:8, pp.59–62 (Thomson West 2d ed.1999).

23. We did not consider FDA questions pro-pounded to Merck as the equivalent of warn-ing letters. We did not consider the prepara-tion of responses to those questions theequivalent of pleadings in legal actions orpreparation for litigation under the workproduct immunity.


communication to and from the attorneyand among corporate employees thatwere primarily in furtherance of legalassistance on that matter were consid-ered privileged, even if the initial draftof the response was prepared for thelawyer by a non-lawyer.24

Under its ‘‘pervasive regulation’’ theo-ry, Merck next argues that e-mails ad-dressed to multiple legal and non-legalpeople within the company are protectedby the attorney-client privilege eventhough the distribution pattern circum-stantially indicates that the communica-tions served both legal and non-legalpurposes, and therefore were not pri-marily for legal advice or assistance.Its argument is that the distribution toevery department of the company is partof a ‘‘collaborative effort to accomplish alegally sufficient draft.’’ Therefore, bythis argument, through the responsivecommentary of every other departmentwithin the company, Merck’s in-houseattorneys are using the other depart-ments as their necessary agents in theirattempt to give the most effective legalassistance. As a consequence, so theargument goes, the dissemination of pro-posed letters, reports, proposals, or arti-cles to departments specializing in suchdiverse things as science, technology,public relations, or marketing are allprimarily for legal advice or assistance.We reject Merck’s argument for a num-ber of reasons.

First, in every company all depart-ments are part of a ‘‘collaborative ef-fort.’’ If a product were not scientifical-ly or medically valid it would not bemarketable. If a good product does notobtain necessary government approval itcannot be placed on the market. If

public relations does not effectively in-crease the company’s name recognitionand good will, doctors will not prescribethe product or consumers will gravitateto a competing name. To say that widedissemination to non-lawyers within acompany for their technical input is stillprimarily legal, makes no more sensethan saying that communicating with in-house counsel is primarily scientific be-cause scientific validity is at the heart ofFDA regulations and, as a consequence,of what lawyers must be concernedabout in public statements, advertise-ments, and labels.

Second, this ‘‘collaborative effort’’ ar-gument, if successful, would effectivelyimmunize all internal communications ofthe drug industry, thereby defeating thebroad discovery authorized in the Feder-al Rules of Civil Procedure. This wouldpreclude plaintiffs from discovering com-munications that might be vital to claimsof knowledge, failure to timely warn, andintentional misrepresentation. To per-mit the attorney-client privilege to havesuch an impact on the discovery processwould be allowing the tail to wag thedog.

Taking the pervasive regulation argu-ment a step further, Merck appeared toclaim throughout its objections to ourtentative rulings that legal advice hadbeen provided by in-house attorneys be-cause they had examined and com-mented upon items pursuant to dictatesof a Merck-created Medical Legal Ref-erence Manual that, in Merck’s view,reflected those pervasive federal regula-tions. Suffice it to say, the advice envi-sioned by the attorney-client privilege isadvice about the laws imposed on us by

24. ‘‘So long as the purpose of the communi-cations is to seek legal advice or assistance, itdoesn’t matter whether the client’s communi-cation was self-initiated or in response to a

request for information by the attorney.’’PAUL R. RICE, 1 ATTORNEY–CLIENT PRIVILEGE IN THE

UNITED STATES, § 5:1, p. 8 (Thomson West 2ded.1999).


society, not the rules that we impose onourselves through guidelines, manuals,or otherwise. The interpretation andapplication of the latter does not requireeither a law degree or admission to abar association. While the principlesand policies that prompted the creationof this Medical Legal Reference Manualmay have been laws, both statutory andregulatory, their interpretation and ap-plication must stand on their own, out-side their characterization in a Manual.Consequently, we interpreted Merck’sreferences to its Manual as illustratingregulatory principles to which it believedit was bound, but not as a basis forapplying the privilege protection.

D. The ‘‘Reverse Engineering’’ Theo-ry

Complicating matters even further,Merck argues, under a theory it hasdubbed ‘‘reverse engineering,’’ that evencommunications with attached studies,articles, abstracts, and proposals thattypically would not be protected by theattorney-client privilege (because thecommunications are among non-lawyersor among both lawyers and non-lawyersbut not for the primary purpose of ob-taining legal advice) should also be pro-tected by the privilege because indirect-ly, adversaries can discern the contentof the legal advice that was subsequentlyoffered. This, Merck argues, is possibleif (1) initial drafts are discoverable fromthe files of the non-lawyers, (2) adver-

saries isolate the recommendationsmade by the non-lawyers on thosedrafts, and (3) compare those changes tothe final version approved for publica-tion. Merck argues that the remainingchanges would be the substance of theadvice the Legal Department offered.

While there may be some truth in theclaim that Merck makes about reverseengineering, the argument is not com-pelling for a number of reasons. First,the fact that legal departments recom-mend that certain actions be taken bytheir corporations does not mean thatthe corporations must follow that advice.Second, alterations can be made in theabsence of recommendations from thelegal department. Third, all recommen-dations prompting revisions are not nec-essarily proposed in writing. Fourth, ifall proposed revisions had to be pro-posed in writing, and the legal depart-ments were given control over publicdissemination of communications, in thatin-house lawyers could require that theirrevisions be incorporated (which appar-ently is true of Merck’s legal depart-ment because it has the power to placeholds on dissemination until its recom-mendations are incorporated or its con-cerns are otherwise satisfied), the role oflegal counsel would change from legaladvisor to corporate decision-maker.This is a role that the corporation doesnot have the right to delegate to attor-neys and then insist that the decisionsthey make are immune from discovery.25

25. In Merck, Ms. Lahner has been givenbroad powers to compel revisions (in the formof additions and deletions), through ‘‘manda-tory comments’’ that serve as holds on letters,advertisements, presentations, labels, articles,television commercials, media inquiries, sci-entific reports, contracts, and research pro-posals. None of these communications canbe published without her comments being in-corporated or her concerns otherwise satis-fied. As a consequence, her general role inthe company appears to have become more

like an executive officer, rather than a legaladvisor to those who make publication deci-sions. As a consequence, a court might bejustified in denying claims concerning manyof her responsive communications that con-tained substantive edits to documents that arenot legal instruments. Instead, we chose topreliminarily deny the claims in anticipationthat questions about primary purpose wouldbe addressed by Merck in its subsequent fil-ings.


The tobacco industry attempted to dothat with departments engaging in sci-entific research on its product and wasunsuccessful.26

Certainly, when a corporate executivemakes a decision after consulting withan attorney, his decision is not privi-leged whether it is based on that adviceor even mirrors it. As the Court notedin United States v. Freeman, 619 F.2d1112, 1119–20 (5th Cir.1980), ‘‘[a]n attor-ney’s involvement in, or recommendationof, a transaction does not place a cloakof secrecy around all the incidents ofsuch a transaction.’’ 27 This cannot begotten around by the simple expedientof putting a lawyer in the shoes of theexecutive or, as Merck has done, givingthe legal department the power of thecorporate executive.

E. The Corporation’s Choices HaveConsequences

The structure of Merck’s enterprise,with its legal department having suchbroad powers, and the manner in whichit circulates documents, has conse-quences that Merck must live with rela-tive to its burden of persuasion whenprivilege is asserted. When, for exam-ple, Merck simultaneously sends com-munications to both lawyers and non-lawyers, it usually cannot claim that theprimary purpose of the communicationwas for legal advice or assistance be-cause the communication served bothbusiness and legal purposes. See Unit-

ed States v. Chevron Corp., 1996 WL444597 (N.D.Cal.1996) (‘‘When a docu-ment is prepared for simultaneous re-view by non-legal as well as legal per-sonnel, it is not considered to have beenprepared primarily to seek legal adviceand the attorney-client privilege doesnot apply.’’); United States v. Interna-tional Business Machines Corp., 66F.R.D. 206, 213 (S.D.N.Y.1974) (‘‘If thedocument was prepared for purposes ofsimultaneous review by legal and non-legal personnel, it cannot be said thatthe primary purpose of the document isto secure legal advice.’’). As a conse-quence, the privilege does not protectthe communications. When these simul-taneous conveyances for mixed purposesare through an e-mail message that liststhe lawyers’ names in the header of thee-mail message, Merck is revealing thecontents of the single message that mayhave been conveyed to its lawyer pri-marily for legal assistance. In that cir-cumstance, the single message couldhave been withheld as a privileged com-munication had Merck sent blind copiesto the lawyers, instead of electing thisformat. Through a blind copy, the con-tent of what was communicated to itsattorney would have remained confiden-tial after future discovery of the docu-ment from the other recipient’s files, itspurpose would have been primarily le-gal, and the privilege would have beenapplicable. Similarly, if Merck had senta wholly separate e-mail communication

26. See, e.g., Schwab v. Philip Morris USA, Inc.,449 F.Supp.2d 992, 2006 U.S. Dist. LEXIS73208, *32–33, 42 (E.D.N.Y.2006); UnitedStates v. Tobacco–Free Kids Action Fund, 2006U.S. Dist. LEXIS 61412 (D.D.C. Aug. 17,2006) (cases discussed therein).

27. ‘‘The privilege does not extend to decisionsmade by the client based on the legal advicethe client received. Since the actions takenby the client do not have to be consistent withthe advice given, an extension of the privilege

to client decisions would be unwarranted.Revealing client actions or decisions woulddisclose neither the substance of the recom-mendation nor the content of the client’s priv-ileged communications upon which the deci-sions/actions were based. Disclosure of theclient’s action, therefore, would not discour-age the conduct that the privilege was de-signed to encourage.’’ PAUL R. RICE, 1 ATTOR-

NEY–CLIENT PRIVILEGE IN THE UNITED STATES,

§ 5:15, p. 113 (Thomson West 2d ed.1999).


with the same materials to the lawyer,the same claim could be successfullymade for that single communicationeven though it otherwise served mixedpurposes. In modern vernacular,Merck, in a variety of instances, ‘‘couldhave had a V–8,’’ but it chose anotherformat and manner of document circula-tion and cannot now be heard to com-plain about the consequences of thosechoices. Otherwise, Merck would beable to limit the scope of what adversar-ies can discover by the way in which itchooses to communicate.

Similarly, after a communication withits attachment has been sent to bothlawyers and non-lawyers in the same e-mail communication, and its primarypurpose is determined not to have beenfor obtaining legal advice, the lawyer’sindependent response can only be pro-tected if the derivative nature of theprivilege is ignored. Theoretically, thelawyer’s response should be protectedonly if it reveals the content of priorconfidential communications from theclient. Since those communications areno longer confidential, nothing the law-yer discloses in her edits reveals pro-tected communications of the client.But aside from the derivative theory, themeans by which Merck attorneys haveresponded to requests for advice createdan additional problem.

Modern technology has made it possi-ble for the attorneys to electronicallyrespond with their advice on the non-privileged attachments to the originalmixed purpose communications. This isdone through electronic line edits thatreveal the lawyers’ proposed additionsand deletions with explanatory com-ments where desired. Through the lineedits, Merck has claimed that what wasotherwise discoverable, as a mixed pur-pose communication, is now made non-discoverable because of the manner inwhich its lawyers chose to reveal theiradvice. This is not acceptable. Merckcannot be permitted to deprive adver-saries of discovery by voluntarily choos-ing to electronically superimpose thatlegal advice on the non-privileged and,therefore, discoverable communications.Of course, where the client’s communica-tions were found to be privileged, theline edits on those documents werefound to be privileged also, when theother elements of the privilege, namely‘‘primarily for legal advice,’’ were foundto be satisfied.

There are instances, of course, wherelegal advice is the primary purpose be-hind lawyers’ comments and wherethese comments are complemented bygrammatical and editorial changes thatcould reasonably be considered inextri-cably intertwined with the advice.28 It

28. In re OM Sec. Litig., 226 F.R.D. 579, 590(N.D.Ohio 2005) (Advice given to Audit Com-mittee by attorneys occasionally was businessin nature. Court held privilege applicablebecause the legal and business concerns wereinextricably intertwined.); Hercules Inc. v.Exxon Corp., 434 F.Supp. 136 (D.Del.1977)(‘‘The problem remains, however, of separat-ing business from legal advice. An importantresponsibility of most patent attorneys, espe-cially those employed by corporate patent de-partments, is to assess the business implica-tions of the company’s patent position.Many of the communications between thepatent attorney and non-legal personnel ofthe corporation would therefore predomi-

nately reflect business concerns, such as thecompetitive position of the company, market-ing strategy, licensing policy, etc. The Courtrecognizes that business and legal advice mayoften be inextricably interwoven. A singleproposed course of conduct such as patentingand licensing of an invention will have bothlegal and business ramifications, and the law-yer may advise as to both in a single commu-nication. As was pointed out in Jack Winter,Inc. v. Koratron Co. [54 F.R.D. 44 (N.D.Cal.1971)], it is necessary to separate the two, inthe interest of preserving the integrity of theprivilege itself: ‘As is not infrequently thecase in patent matters, the problem of classi-


is Merck’s burden, however, to demon-strate this, and that burden is mademore difficult by the fact that often thelegal department’s comments seem to beexclusively editorial. While limited edi-torial and grammatical changes are anexpected part of a lawyer’s services(particularly in a corporate contextwhere the client is this amorphous legalentity, and the various departments andemployees who man those departmentsrely on one another in the developmentof a product for public dissemination),too often we discovered lawyers insert-ing new paragraphs, introducing refer-ences to different drugs, or eliminatingentire sections of proposed articles, re-ports, and presentations. In these in-stances, in particular, we concluded thatMerck had a responsibility to explainhow this related to legal services alleg-edly being provided. When non-legaldepartments of a corporation primarilyconcerned with technology, science, pub-lic relations or marketing make com-ments among themselves about matterswithin their corporate responsibilities,those communications are not protectedby the attorney-client privilege. When

lawyers make the same comments abouttechnology, science, public relations, ormarketing, a different result is not war-ranted unless Merck demonstrates thatthose comments are primarily relatedto legal assistance. When it failed to dothis on a document-by-document basis,its claims were denied. Merck cannotreasonably expect judicial officers tomake this assessment for it on either adocument-by-document basis or univer-sally through a presumption that every-thing in-house counsel comments upon islegal advice.29

F. Application of Privilege Princi-ples

Before beginning our examination andevaluation of the 2,000 sample docu-ments presented to us by Merck, andthe 600 documents chosen by the plain-tiffs from Merck’s privilege log, weasked Merck to provide certain informa-tion to us to make that decision moreinformed. Significantly, at this latepoint in the privilege resolution process,Merck indicated that it had not preparedaffidavits to support its privilege claims.

fication here was particularly troublesome asthe attorneys for Koratron performed virtual-ly every task incident to filing for and obtain-ing a patent or trademark registration. Theywere so closely associated with the activitiesof Koratron that picking out from the mass ofdocuments presented to the court thosewhich involved non-legal transactions not sol-iciting or offering legal advice, and the sepa-rating of these from documents which didinvolve the exercise of the attorney’s art, be-came at times an arduous and complex exer-cise. Yet we have sought to not lose sight ofthe importance of the distinction, for it isimportant that the attorney-client privilegenot be downgraded in the interests of expedi-ent result.’ ’’ 54 F.R.D. at 47TTTT If the pri-mary purpose of a communication is to soli-cit or render advice on non-legal matters, thecommunication is not within the scope of theattorney-client privilege. Only if the attorneyis ‘‘acting as a lawyer—giving advice with

respect to the legal implications of a pro-posed course of conduct—may the privilegebe properly invoked. In addition, if a com-munication is made primarily for the purposeof soliciting legal advice, an incidental re-quest for business advice does not vitiate theattorney-client privilege.’’).

29. An example of a non-privileged communi-cation involving Merck’s in-house counselwas a communication with a corporate em-ployee discussing a conference at which par-ticipants were to be given gifts, and the ques-tion being discussed was whether items likesweat bands, water bottles, and towels wereappropriate for the occasion. While therecertainly are restrictions on bribing individu-als, this could not reasonably be argued asfalling into that realm. The only questionwas their appropriateness in light of the cir-cumstances in which they were being given.The claim was denied.


This, therefore, created significant prob-lems in the reviewing process becausewe were left with only the documentsthemselves to find a basis upon which aprivilege determination could be made.Relative to attorney-client privilegeclaims, none of the individuals authoringor receiving the documents had beenidentified, their relationships to the con-tent of the documents were not ex-plained, how the documents evolved, andwhat they substantively related to couldnot be discerned. Relative to workproduct immunity claims, the litigationallegedly being prepared for was notidentified and there was no indication ofwhen it reasonably could have been an-ticipated. In a few instances, Merckattached an explanation to the folders inwhich the documents were submitted forjudicial review, but in none of theseinstances was the identity of the individ-ual or the basis of his knowledge re-

vealed (as would normally be the casewhen a supporting affidavit is filed).

To address the element of confiden-tiality that must be present and main-tained for attorney-client privilegeclaims to be valid, we asked Merck toprovide us with: (1) all company policieson the preservation of confidentialityand restrictions on the secondary circu-lation of confidential communicationsboth within and without the corporatestructure; (2) an affidavit from a knowl-edgeable individual who could attest tothe fact that those guidelines had beenmade known to corporate employees andfollowed by them; 30 and (3) directoriesof corporate personnel, both alphabeticaland by job titles, with descriptions ofeach position so that proper distributionof documents within the corporationcould be evaluated.31 To assist in thedetermination of whether in-house law-

30. This was supplied to the Special Master on6/6/07 through an affidavit of Serena Conway,a Senior Internal Auditor in the CorporateAudit and Assurance Services Department ofMerck and copies of company policies requir-ing the preservation of confidences within theorganization. While Merck’s policies do notspecifically address the issue of attorney-client privilege, their requirements are suffi-ciently broad to cover attorney-client commu-nications and the information they contain,particularly when those communications arelabeled ‘‘Confidential’’ or ‘‘Protected by theAttorney–Client Privilege’’ and circulation ofconfidential information is limited only on a‘‘need to know’’ basis. In addition, all em-ployees receive training, which includes dis-cussions of their responsibilities to maintainconfidentiality, and all policies relating toconfidentiality are made available to themelectronically.

31. The affidavit filed in support of each docu-ment should identify all recipients and ex-plain their need to receive the communica-tion. As recently explained in Muro v. TargetCorp.:

Whether in the form of supporting affidavitsor additional detail in the privilege log [the

privilege proponent is] required to provideadditional facts as to the identity and func-tion of those individuals included in thecommunication to establish that the ‘‘em-ployee ma[de] the communication at thedirection of his superiors in the corpora-tion’’ or that ‘‘the subject matter uponwhich the attorney’s advice [was] sought bythe corporation and dealt with in the com-munications [was] the performance by theemployee of the duties of his employment.’’A name and ambiguous or undefined jobtitle do little to substantiate that the confi-dentiality of the communications was notcompromised by disclosure to individualsoutside the attorney-client relationship.

243 F.R.D. 301, 308 (N.D.Ill.2007) (internalcitations omitted). Because this initially wasnot provided to the Court with the privilegeclaims asserted by Merck, time was consumedand expenses unnecessarily incurred becausethe Special Master had to check the recipientsand deny claims with delineated reasonswhen questionable circulation was discover-ed, and then re-examined those documentsafter explanations were provided by Merck,after which the paralegals had to correct thespreadsheets when new recommendationswere required.


yers were primarily involved in render-ing legal advice, we also had Merck pro-vide us with a list of employees in itsLegal Department with job descriptionsfor each position, the credentials of eachindividual and a listing of additional ti-tles and responsibilities of each lawyer(particularly Joanne Lahner, who alleg-edly was the source for the vast majori-ty of attorney-client privilege claims).

As noted above, in our assessment ofclaims, we established guidelines to en-sure consistency in rulings for recurringtypes and formats of communications.After the sample ruling process was wellunder way, and the guidelines had ade-quately evolved, we decided to providethese guidelines to the parties beforeour final report and recommendations tothe Court so that both Merck and theplaintiffs could more easily understandthe reasoning behind our tentative rec-ommendations, without having to extra-polate from those results. It was hopedthat through this disclosure of our evolv-ing guidelines, Merck might accept thatcertain claims are not legitimate andwithdraw them from the process. Simi-larly, it was anticipated that the plain-tiffs might concede that certain types ofcommunications are not going to be dis-coverable and withdraw their demandsfor them.

G. Special Master’s SubstantiveGuidelines

1. If a memorandum was addressedsolely to an attorney with apparentlylimited circulation and an identifiable le-gal question was raised by the author(whether or not it was answered by theattorney), it was found to be a classicalexample of when the attorney-clientprivilege is applicable.

2. When e-mail messages were ad-dressed to both lawyers and non-lawyersfor review, comment, and approval, weconcluded that the primary purpose of

such communications was not to obtainlegal assistance since the same was be-ing sought from all. Neither the mes-sages nor their attachments were foundto be protected by the attorney-clientprivilege because, as previously noted,while the disclosure of such e-mail mes-sages reveals the content of what hadbeen communicated to the lawyer (andmight otherwise be privileged becausethe single copy sent to the attorneycould have been primarily for the pur-pose of obtaining legal assistance), re-vealing this information on the face ofdiscoverable documents (these docu-ments would be discoverable from thefiles of the other recipients) breachesthe confidentiality of that communicationto the attorneys and thereby destroysthe attorney-client privilege protection.A corporation’s choices of means andformat in the communications betweentheir lawyers and employees cannot lim-it their adversaries’ right to discovery ofwhat otherwise is non-privileged anddiscoverable.

We accepted the possibility that ad-dressing communications to both law-yers and non-lawyers could reflect theseeking of legal advice from the lawyersand that the non-lawyers were simplybeing notified about the nature of thelegal services sought. Facially, howev-er, it appeared far more probable thatthe non-lawyers were being seen thecommunications for separate businessreasons. Therefore, it was the burdenof Merck to overcome the logical infer-ence created by the pattern of distribu-tion.

Relative to the circulation of legal ad-vice within a corporate structure, it isnot acceptable for a corporation to takea document and attachment that areprivileged, because they were sent pri-marily to an attorney for legal advice,and then subsequently send the same


document and attachment to other cor-porate personnel for non-legal purposes(here for general review and comment—the same purpose for which they initiallycould have been placed in the headerwhen circulation was initially to the at-torney) and successfully claim that thedocument and attachment are privilegedbecause they originally had been sent tothe attorney and contain handwrittencomments or electronic line edits by theattorney. We recommended that Merckbe permitted to redact the comments ofthe attorney as privileged legal advice(assuming the elements of the privilegewould otherwise be established), butconcluded that the presence of the ad-vice did not convert the document andattachment into privileged communica-tions. The subsequent conveyance ofthe documents to other corporate per-sonnel can only be privileged when thoseadditional recipients are being sent thedocuments only to apprise them of thelegal advice that was sought and re-ceived. As the initial conveyance of thedocuments and attachments to both law-yers and non-lawyers for both legal andnon-legal purposes prevents them frombeing primarily for legal advice and as-sistance, and therefore from being pro-tected by the privilege, the subsequent,albeit indirect, conveyance for the samepurpose cannot change the result. Oth-erwise, corporations would be given asimple means for getting around theirdiscovery obligations by funneling docu-ments through legal counsel for com-ment before sending them to everyoneelse within the corporate structure.Courts should never permit the impri-matur and protection of the privilege tobe acquired so easily.

3. When communications and attach-ment were found to serve mixed pur-poses because they were sent to bothlawyers and non-lawyers for both legaland non-legal purposes (and thereforenot primarily for legal assistance, as ex-plained above), the edits by attorneyson those non-privileged communicationscould not be privileged under the deriv-ative theory for responsive attorneycommunications. Even if the derivativetheory had not made the attorneys’ re-sponses non-privileged, the manner inwhich Merck lawyers rendered theiradvice would have. On these non-privi-leged electronic attachments, the attor-neys usually gave their advice in elec-tronic line edits on the discoverabledocuments. Merck then claimed privi-lege on those attachments. Havingchosen the electronic format, Merckcannot convert discoverable documentsinto non-discoverable privileged docu-ments by the format in which theychose to render the advice. Ignoringthe technical violation of the derivativerule, we recommended the denial ofprivilege claims for those attachmentsbut permitted Merck to redact only theelectronic edits and comments of the at-torneys.32 Of course, when the originalattachments were privileged, the legaladvice provided through line edits onthem were privileged too, and it wasrecommended that the privilege begranted for the whole communication.If, however, as discussed above, thesubsequent circulation of the documentswas perceived by us as not being pri-marily for the purpose of apprising therecipients of the advice received onthem, but to solicit, in the normal

32. Merck occasionally noted that the attach-ments had previously been produced to theplaintiffs in response to other discovery de-mands. This, however, did not resolve thequestion before us because the attachments

may have had other additions, deletions, ed-its, and comments since they were produced.Consequently, redactions were permitted onlyfor the last attorney’s electronic line edits.


course of business, further review andcomment on the attachment, we recom-mended that the privilege be denied forthe attachment, but that Merck be per-mitted to redact the advice given.

4. If a memorandum was writtenonly to an attorney within the corpora-tion’s legal department, with an attach-ment for examination, review, comment,and approval, we found that the com-munication and attachment were sentprimarily for the purpose of obtaininglegal advice, and therefore, were pro-tected by the attorney-client privilege.Even when these communications to thelegal department were compelled bycompany policy, we concluded that sincethe company was the client, the legalassistance was necessary, and we wouldnot try to discern what was in theminds of the employees/authors of thosecommunications.

The lawyer’s response (often appear-ing electronically on the attachment)was accepted as legal advice, along withminor grammatical and editorial com-ments, unless the document on whichcomments and changes were being pro-posed was not a typical legal instrumentand the response had changes and com-mentary that were extensive or relatedpurely to technical, scientific, promotion-al, management, or marketing mattersthat did not appear to be related to legalassistance. In these instances, we de-nied the claims and insisted that Mercksatisfy its burden of proving that theprimary purpose of the responses wereproviding legal assistance. If the mem-orandum and attachment related toidentifiable legal instruments like a pro-posed contract, these generally werefound to be privileged, even with exten-sive editorial and grammatical revisions,because they are the types of instru-ments that one reasonably expects moreextensive input and guidance from re-viewing attorneys.

Often, however, the e-mail covers towhich the proposed contract was at-tached originated in e-mail messages towhich no lawyers were copied and legaladvice was not the purpose of the com-munications. As a consequence, theywould not independently be protected bythe attorney-client privilege. However,those messages and their attachmentscould appropriately be part of a confi-dential communication to an attorney forlegal assistance. Therefore, when theywere attached to communications sentonly to an attorney for the apparentpurpose of obtaining legal assistance,they were found to be privileged on theassumption that the original messagesand attachments were produced fromthe files of the original authors and re-cipients. If, however, the integration ofan attorney in the e-mail thread wasthrough a communication that was sentto many for review and comment, includ-ing an attorney, the primary purpose ofthat subsequent communication wasfound not to be for legal assistance, andthe attachment was found not to be pro-tected by the privilege. The privilegeprotects what independently is not privi-leged only if it is attached to, or incorpo-rated in, a communication that is pro-tected by the privilege.

5. At the end of the messages de-scribed above, we occasionally encoun-tered e-mail threads that were sent toothers after the initial interaction withthe lawyer ended. This additional dis-semination of the e-mail thread wasfound not to be privileged when theconveyance was by a non-lawyer recipi-ent, unless it was clear that legal advicepreviously obtained was being circulatedto those within the corporate structurewho needed the advice in order to fulfilltheir corporate responsibilities. Whenthe conveyance was by the lawyer and itappeared that it was for the purpose of


acquiring more information upon whichmore informed legal advice or assistancecould be rendered, the additional con-veyance and response were also found tobe privileged.

6. E-mails addressed to an attorneywith many being copied to non-lawyersthroughout the company raised a ques-tion as to whether the primary purposeof the communication was for legal ad-vice or assistance. This issue may be nodifferent from when the communicationswere addressed to both lawyers andnon-lawyers, except that in the instanceof copies to non-lawyers, the possibilitieswere greater that copies were being sentsimply to inform those recipients of thenature of the legal advice being sought,and not for review and comment in thenormal course of business. This, howev-er, appeared to be unlikely when thecommunications were part of a mandato-ry process of company-wide review,comment, and approval.

The only thing that we found ques-tionable about communications sent tothe legal department was the nature ofthe services ultimately provided—oftenappearing to be more technical, scienti-fic, editorial, and promotional than legalin nature. As noted above, however, wewere receptive to evidence ultimatelyprovided by Merck that demonstratedthat in the highly regulated drug indus-try these comments and edits were partof the rendering of legal assistance. Inthis regard, we insisted that Merck pro-vide us with more than general asser-tions about the nature of the drug indus-try. We required specific assertionsabout each document, preferably from

individuals with personal knowledgeabout their nature and purpose.

7. With regard to e-mails that wereeither to or from an attorney but did notreveal the substance of what either theclient was communicating (for exampleattaching a study, report, article, etc.) orthe attorney was advising (because thecomments appeared on the attachment),the privilege claim was denied for the e-mail messages, regardless of what thedisposition was on the attachments.While the e-mails may have been themeans for obtaining legal advice or as-sistance, the e-mails themselves did notreveal confidential information about theattorney-client relationship that wasprotected by the privilege.

8. E-mail threads (a series of e-mailmessages) in which attorneys were ulti-mately involved were usually inappropri-ately listed on the privilege log as onemessage. When this occurred, it wasusually noted in our decision. Some ofthese threads involved ten to fourteenmessages that preceded the direct orlimited exchanges with the attorneys.Each of these e-mail communicationsshould have been assigned separatebates numbers and identified in the priv-ilege log. Simply because technologyhas made it possible to physically linkthese separate communications (which inthe past would have been separate mem-oranda) does not justify treating them asone communication and denying the de-manding party a fair opportunity toevaluate privilege claims raised by theproducing party.33 Earlier in the pro-cess Merck might have been required to

33. The privilege logs filed in this litigation byMerck for e-mail threads were deficient in thesame way the privilege logs were deficient inthe consolidated Microsoft cases in which theSpecial Master in this case previously servedin the same role. Merck, like Microsoft, as-serted privilege for an entire e-mail thread

but only described the last message in thethread—substantively often the least impor-tant of the string of messages. The reasonswhy this type of privilege log entry is bothinappropriate and unfair are discussed inPAUL R. RICE, ELECTRONIC EVIDENCE–LAW AND

PRACTICE, Chapter 3, pp. 166–168 (ABA 2005).


correct its privilege log to disclose thesemessages and further explain other am-biguous descriptions that were em-ployed. However, at this late stage ofthe pretrial process, and in the limitedrole that we were asked to play in thesampling process sanctioned by theFifth Circuit Court of Appeals, we askedMerck only to inform us and the plain-tiffs whether those portions of the e-mailthreads previously unacknowledged inthe logs had been produced with theirattachments. This did not appear to bethe case on the face of the privilege logsince privilege had been claimed on the‘‘entire document,’’ which, of course, in-cluded the earlier messages. A subse-quent report from Merck did not assureus that all non-privileged threads hadbeen produced. Therefore, it was neces-sary that we note this over-assertion ofprivilege on a document-by-documentbasis in our report. Of course, as dis-cussed above, the entirety of the threadswere found to be privileged when theywere subsequently integrated into privi-leged communications solely to attor-neys for legal advice and, therefore, nototherwise discoverable.

9. The doctrine of work product wascreated by the Supreme Court in Hick-man v. Taylor, 329 U.S. 495, 67 S.Ct.385, 91 L.Ed. 451 (1947), to preserve theadversarial nature of the trial process.It gives a qualified immunity to commu-nications that are created in preparationfor litigation. Therefore, the applicationof the immunity requires (1) that thelitigation anticipated be identified, and(2) that it be proven that the communi-cation in question was in preparation forthat litigation. When litigation wasidentified in the Merck sample docu-ments, but the communications relatedonly to things like news releases, workproduct claims were denied. Many ofthose communications, however, were

still protected by the attorney-clientprivilege.

See Special Master’s Report at 4–21 (Rec.Doc.11566–2).

III. REVIEW OF THE SPECIALMASTER’S REPORT AND REC-OMMENDATIONS AND RESO-LUTION OF OBJECTIONS

Under Rule 53 of the Federal Rules ofCivil Procedure, as amended in 2003, adistrict court must decide de novo all ob-jections to findings of fact and conclusionsof law made or recommended by a specialmaster. See Fed.R.Civ.P. 53(g)(3)-(4). Inaddition, though not mandated by Rule 53,a court may nevertheless review de novo aspecial master’s findings of fact and con-clusions of law as to which there are noobjections. See Fed.R.Civ.P. 53 advisorycommittee’s note (2003); see also LumaCorp. v. Stryker Corp., 2006 WL 285973, at*3 (S.D.W.Va. Feb. 3, 2006).

First, and perhaps most importantly, theparties do not object to the proceduresemployed by the Special Master in thiscase. Given the Fifth Circuit’s concernthat the Court’s prior individualized reviewof every single document ‘‘proved to beinadequate’’ and potentially could have be-come ‘‘an abuse of discretion,’’ In re VioxxProds. Liab. Litig., 2006 WL 1726675, at*2 (5th Cir. May 26, 2006), the parties’satisfaction with the sample resolution pro-cess ultimately employed cannot be under-stated. Indeed, Merck notes in its motionthat the ‘‘Special Master’s review process,while mindful of the time pressures in thislitigation, was thorough, fair, and com-plete.’’ The PSC concurs in a recent letterto the Court, noting that they ‘‘appreci-ate[ ] the effort and time that Special Mas-ter Rice and Special Counsel Barrierehave spent in connection with the privilegeissues.’’ The Court agrees with the par-ties and finds that the sample resolutionprocess faithfully implemented by Special


Master Rice and Special Counsel Barrierehas provided adequate procedural protec-tions.

Second, Merck requests that the Courtonly accept those parts of the Special Mas-ter’s Report that directly address Merck’sspecific privilege assertions. Merck con-tends that the Court should reject certainportions of the Report that go beyondanalysis of the privilege claims at issue.Specifically, Merck asks the Court to re-ject (1) certain statements suggesting thatMerck’s in-house counsel function at timesas corporate officers rather than attorneys,(2) certain statements suggesting thatMerck may have attempted to manipulatethe discovery process, and (3) certainstatements that Merck failed to provideaffidavits or other evidentiary support forits privilege claims. However, the Courtsees no reason to reject any portion of thenarrative provided in the Special Master’sReport, as it merely provides context forhis individualized recommendations oneach document. Indeed, the Report isboth learned and comprehensive, and un-doubtedly has allowed the Court to reach amore informed decision on each of Merck’sindividual claims of privilege.

Third, Merck has made a number ofobjections to specific recommendationscontained in Appendix I to the SpecialMaster’s Report. These objections gener-ally involve: (1) legal advice related topublic relations materials; (2) attorney re-view of draft written and oral materials toensure regulatory compliance; (3) infor-mation related to the interaction betweenoutside litigation counsel and Merck em-ployees; and (4) various other document-specific issues. Merck has organized itsobjections to specific recommendationsinto three indices. Merck’s Index I ad-

dresses certain recommendations con-tained in Appendix I—Part A. Merck’sIndex II addresses certain recommenda-tions contained in Appendix I—Part B.Merck’s Index III addresses certain rec-ommendations that the Special Master re-fused to modify in response to Merck’sJuly 16 letter seeking clarification.

The Court has now completed an inde-pendent review of those documents as towhich Merck objects to the Special Mas-ter’s recommended ruling. In some in-stances, the Court is in complete agree-ment with the Special Master and adoptshis recommendations without explanation.However, recognizing that ‘‘classifyingdocuments containing communications ofemployees and attorneys of large corpora-tions for entitlement to the attorney-clientprivilege frequently calls for close, toughjudgment calls,’’ In re Vioxx Prods. Liab.Litig., 2006 WL 1726675, at *9 (5th Cir.May 26, 2006) (Dennis, J., concurring inpart and dissenting in part), the Court hasmodified a number of the Special Master’srecommendations and issued modified rul-ings. The Court’s resolution of Merck’sspecific objections are set forth, document-by-document, in the three attached charts,which correspond to Merck’s three indi-ces.34

IV. CONCLUSION

The emergence of the internet and elec-tronic methods of communication presentsignificant challenges for traditional dis-covery practices. These challenges are ex-acerbated in MDL proceedings and other-wise complex cases where, because of theirvastness, no one counsel can be expectedto keep up with everything that transpires.Discovery is often handled by a discovery

34. In the attached charts, the Court has in-cluded the following information for each ob-jection: both the initial and final documentnumbers assigned by the Special Master, the

Bates number assigned by Merck, the SpecialMaster’s final recommendation and explana-tion, and the Court’s final ruling and reason-ing.


committee in such cases, and trial prepara-tion by a separate committee. This pres-ents opportunities for disconnects.

With the ever-expanding use of, if notdependence on, e-mail technology, courtswill increasingly be called upon to reviewelectronic communications to determinewhether they are protected by the attor-ney-client privilege. A primary challengefor the courts in this area is one of organi-zation and administration. For example, itis essential that all e-mail threads begrouped together, rather than dispersedthroughout several boxes of documentswhen produced for in camera inspectionby the courts. Another challenge is creat-ed by the sheer volume of documents thatmust be reviewed in complex cases. Thenumber of potentially relevant documentsoften reaches into the millions. It takes alegion of attorneys and paralegals to cullthrough the documents and recommend ordecide whether each document is respon-sive to a request and should be produced,or whether it is instead non-responsive orprivileged. In such a milieu, there is astrong bias in favor of non-production.Such circumstances also create opportuni-ties for the attorney who concludes thatdelay is strategically desirable.

When privilege is claimed on 30,000 doc-uments, amounting to nearly 500,000pages, as occurred in this case, the courtsare severely taxed. When the task ofreview is shifted to outside experts, costsmount.35 In the long run, such a situationis detrimental to the litigants, the courts,and our system of justice. Some accept-able solution must be devised, one whichfully protects the rights of the litigants toclaim privilege and at the same time ismore feasible for the courts, less expensive

for the parties, and less time consumingfor everyone involved.

While this Court has experienced signifi-cant fits and starts in struggling withthese issues, the sample resolution processsuggested by the Fifth Circuit and ulti-mately employed in this case, along withthe appropriate ‘‘packaging’’ of withhelddocuments, may be able to streamline suchdiscovery disputes in future cases. It maybe desirable to issue a pretrial order set-ting forth an appropriate method of orga-nizing documents to be submitted for incamera review and establishing mandatoryguidelines for the creation of a detailedprivilege log that identifies the individualsthat author and receive each document andexplains their relationship to the documentand to the party asserting the privilege.Moving forward in this case, the Courtexpects the parties to extrapolate mean-ingful guidance from the sample resolutionprocess. Indeed, this discovery disputemust ultimately come to an end.

Accordingly, for the foregoing reasons,IT IS ORDERED that Merck’s Motions toAdopt in Part the Special Master’s Reportand Recommendations and Merck’s Objec-tions Thereto (Rec. Docs. 11729 & 12020)are GRANTED IN PART and DENIEDIN PART as follows:

First, IT IS ORDERED that the SpecialMaster’s Report is hereby ADOPTED,that the Special Master’s recommendationson individual representative documents asto which no objections have been filed arealso hereby ADOPTED, and that the Spe-cial Master’s recommendations on individ-ual representative documents as to whichMerck has filed objections are ADOPTEDIN PART and MODIFIED IN PART, asset forth in the attached charts.

35. To date, Special Master Rice and SpecialCounsel Barriere have incurred over$400,000.00 in fees and expenses in reviewingapproximately 2,500 representative docu-

ments over the course of three months.These costs have been paid equally by theparties.


Second, IT IS FURTHER ORDEREDthat Merck shall begin producing docu-ments in accordance with this Order &Reasons immediately, starting with thedocuments to which there was no objectionto the Special Master’s recommendations,and that all documents held to be discover-able (both sample documents reviewed bythe Special Master and similar documentsin the remaining census) shall be producedno later than September 15, 2007. In itsmotion, Merck requests that it not be re-quired to produce redacted versions of cer-tain documents if exact duplicates of suchdocuments have already been given to theplaintiffs. This request is well-founded.Merck need not produce redacted versionsof documents to the extent that ‘‘identical’’versions (missing only those specific com-ments found to be privileged) have alreadybeen produced, but these documentsshould be noted and an explanation givenas to when and where the ‘‘identical’’ docu-ments were previously produced.36

,

Ken ROMERO

v.

CAJUN STABILIZING BOATSINC., et al.

Civil Action No. 6:06cv0263.

United States District Court,W.D. Louisiana,

Lafayette–Opelousas Division.

Aug. 13, 2007.

Background: Contractor’s employeebrought action against vessel owner to re-cover damages for injuries sustained whenhe allegedly fell down a man-hole as hedescended into the rudder room of a jack-up service vessel. Owner filed motion forsummary judgment.

Holdings: The District Court, Melancon,J., held that:

(1) vessel owner did not violate its turn-over duty to contractor’s worker, and

(2) vessel owner, which did not have actualknowledge of the alleged hazards be-fore the accident occurred, had no dutyto intervene and warn contractor’s em-ployee of any hazard created by themovable barricade or by open and ob-vious presence of anti-corrosive materi-al.

Motion granted.

36. In extrapolating from these sample rul-ings, the parties should bear in mind that theCourt may, in the future, require justificationsfor any assertions of privilege on documentsin the remaining census. Should the needarise, the Court anticipates requesting thatthe Special Master review a random sampleof the remaining documents ultimately with-held to determine whether or not this Order& Reasons has been complied with in goodfaith. If such a ‘‘check’’ by the Special Mas-

ter reveals documents that should have beenproduced given their substantial similarity tosample documents found not to be privileged,the Court will require Merck to construct adetailed privilege log, in accordance with theguidelines set forth by the Special Master,containing all remaining privilege claims.The Special Master will then begin reviewingall withheld documents individually, and theCourt will consider shifting the cost of thisreview onto Merck entirely.

Documents

In Re Vioxx Products Liability Litigation - Jenner & …IN RE VIOXX PRODUCTS LIABILITY LITIGATION789 Cite as 501 F.Supp.2d 789 (E.D.La. 2007) litigation are not preempted in any respect