The Chamber of Commerce and ACC said in the brief that the FTC was taking an in-house counsel’s ‘greatest strength’ and instead transforming it ‘into a liability’. The brief was filed  at the US Court of Appeals for the District of Columbia Circuit with the FTC urging the court to disregard the attorney-client privilege between Boehringer and its then-counsel, Marla Persky. Boehringer had told the court last month that the FTC’s attempt to obtain Boehringer’s documents relating to a patent dispute settlement would ‘eviscerate attorney-client privilege’.

FTC investigation

The move follows the FTC’s investigation of two 2008 patent settlement agreements that Boehringer entered into with generic drugs company Barr Laboratories. The settlements resolved patent infringement actions brought by Boehringer against Barr and allowed Barr to market two generic products before the expiration of Boehringer’s patents covering Aggrenox (aspirin-dipyridamole) and Mirapex (pramipexole).  

'Prove what hat she wore'

According to the brief, the FTC has said that Persky must 'prove which hat she wore' during the patent settlement agreement between Boehringer and Barr. But the brief argued that it is common for an in-house counsel to be involved in the affairs of the corporation and hold both a legal title (as general counsel) and a corporate one (as vice president), according to Life Sciences Preview. It further argued, according to the publication’ that the constriction of the attorney-client privilege would be ‘significant’, as without assurances it would make businesses less likely to disclose facts to their attorneys and to seek legal advice.