In re ACTOS Antitrust Litigation

USL SUNT

UNITED STATES DISTRICT COURT ELECTRONICALLY FILED

SOUTHERN DISTRICT OF NEW YORK DOC □

DATE FILED:__ 3/30/2022 __

IN RE ACTOS ANTITRUST LITIGATION

THIS DOCUMENT RELATES TO: Master File No. 1:13-cv-09244 (RA) (SDA)

ALL ACTIONS

OPINION AND ORDER

STEWART D. AARON, United States Magistrate Judge:

Pending before the Court is Plaintiffs’ Letter Motion seeking to compel Defendants

Takeda Pharmaceutical Co. Ltd., Takeda America Holdings, Inc., Takeda Pharmaceuticals U.S.A.,

Inc. and Takeda Development Center Americas, Inc. (collectively, “Defendants” or “Takeda”) to

(1) produce all nonprivileged, responsive earlier-in-time emails that are part of the most-inclusive

email threads Takeda already has produced or will produce to Plaintiffs; and (2) provide privilege

log entries for earlier-in-time emails that are part of email threads redacted or withheld for

privilege. (Pls.” 3/22/22 Ltr. Mot., ECF No. 359.) For the reasons set forth below, Plaintiffs’ Letter

Motion is GRANTED IN PART and DENIED IN PART.

BACKGROUND

This is a complex antitrust class action in which Plaintiffs allege that the Takeda prevented

competitors from timely marketing a generic version of Takeda’s diabetes drug ACTOS by falsely

describing two patents to the Food and Drug Administration. See In re Actos End-Payor Antitrust

Litig., 848 F.3d 89, 92 (2d Cir. 2017). Plaintiffs are drug purchasers who allege that they wrongfully

were obliged to pay monopoly prices for ACTOS from January 2011, when Takeda’s patent on the

active ingredient in ACTOS expired, to at least February 2013, when the mass of generic market

entry occurred. See id.

This action was filed on December 31, 2013. (See Compl., ECF No. 1.) On March 18, 2015,

the Court approved the Order Governing Protocol for Discovery of Electronically Stored

Information and Hard Copy Documents (the “Discovery Protocol”) that the parties had proposed.

(See Discovery Protocol, ECF No. 193.) The Discovery Protocol calls for the production of

electronically stored information (“ESI”) in native format, together with the metadata and coding

fields set forth in Exhibit 1 to the Protocol. (See id. at 6-7 & Ex. 1.) The Protocol requires the

parties to de-duplicate the ESI that is produced, so as to avoid the production of “exact duplicate

documents.” (See id. at 4-5.) However, the Protocol nowhere provides for the production of only

the most inclusive email threads. (See generally Discovery Protocol.)

After motion practice and two appeals to the Second Circuit, on August 25, 2021, the

Circuit remanded this action to this Court. See United Food & Com. Workers Loc. 1776 &

Participating Emps. Health & Welfare Fund v. Takeda Pharm. Co. Ltd., 11 F.4th 118, 138 (2d Cir.

2021)

Beginning in February 2022, Takeda made multiple rolling productions of non-privileged

documents from 25 agreed custodians, including six in-house lawyers. (See Pls.’ 3/22/22 Ltr. Mot.

at 1; Defs.’ 3/25/22 Opp., ECF No. 362, at 1.) In its production, Takeda used email threading, “by

which a party reviews and produces the most-inclusive email in a thread.” (See Defs.’ 3/25/22

Opp. at 3.) Plaintiffs object to Takeda’s use of email threading and seek to compel Takeda to

produce what they refer to as “earlier-in-time emails,” as well as the metadata associated with

those emails. (See Pls.’ 3/22/22 Ltr. Mot. at 3; Pls.’ 3/28/22 Reply, ECF No. 366, at 3.)

Plaintiffs also seek to compel Takeda to provide privilege log entries for all emails,

including the earlier-in-time emails. (See Pls.’ 3/22/22 Ltr. Mot. at 2; Pls.’ 3/28/22 Reply at 1-2.)

Takeda responds that compelling such an approach “would impose an enormous burden.” (See

Defs.’ 3/25/22 Opp. at 2.) The parties have exchanged drafts of a privilege log protocol, but have

been unable to agree to the terms. (See Defs.’ 3/25/22 Opp., Ex. 1.)

The Court held a telephone conference on March 29, 2022, during which Plaintiffs’ Letter

Motion was addressed.

DISCUSSION

I. Email Threading

The first issue before the Court, i.e., regarding email threading, highlights the importance

of negotiating a comprehensive ESI protocol before data production is undertaken. The issue

arises here because Takeda made its initial rolling productions using email threading even though

the Discovery Protocol, by its terms, did not permit such approach.

Rule 34 of the Federal Rule of Civil Procedure requires a party to produce designated ESI.

See Fed. R. Civ. P. 34(a)(1)(A). The Federal Rules of Civil Procedure do not contain provisions

regarding the use of email threading, nor do the Local Civil Rules of this Court.1 However, Rule

1 During the March 29 conference, Takeda argued that email threading was consistent with Rule 34(b)(2),

which permits production “in a reasonably usable form or forms.” See Fed. R. Civ. P. 34(b)(2)(E)(ii).

However, Rule 34(b)(2)(E)(ii) only comes into play if the form of production is not “otherwise stipulated

or ordered by the court.” See Fed. R. Civ. P. 34(b)(2)(E). Here, the Discovery Protocol, which was approved

by Judge Abrams, called for the production of ESI in native format, together with the metadata and coding

fields set forth in Exhibit 1 to the Protocol, and did not permit the exclusion of any ESI or metadata from

production. (See Discovery Protocol at 6-7 & Ex. 1.) In addition, as the Advisory Committee Notes to the

2006 Amendments to Rule 34 make clear, where “the responding party ordinarily maintains the

information it is producing in a way that makes it searchable by electronic means, the information should

not be produced in a form that removes or significantly degrades this feature.” See Fed. R. Civ. P. 34, Adv.

Comm. Notes, 2006 Amend. In the present case, by performing threading, Takeda has degraded Plaintiffs’

ability to conduct searches of the emails for senders and recipients, as discussed below.

29 of the Federal Rules of Civil Procedure permits the parties to stipulate to procedures governing

discovery, see Fed. R. Civ. P. 29(b), for example, by use of discovery protocols. Indeed, the Sedona

Principles2 encourage the parties to have “early discussions” regarding “procedural issues

relating to the form of production,” and to enter into an “agreed upon protocol governing the

production of ESI and avoid downstream misunderstandings or disputes.” See The Sedona

Principles, Third Edition: Best Practices, Recommendations & Principles for Addressing Electronic

Document Production, 19 Sedona Conf. J. 1, Comment 3.c. (2018) (hereinafter, “Sedona Elec. Doc.

Prod. Principles”), available at https://thesedonaconference.org/publications (italics omitted);

see also id., Comment 12.b. (“Ideally, the form or forms used for production of ESI should be

agreed upon early.” (italics omitted)).

It is not uncommon for ESI protocols to address the use of email threading. As Takeda

notes, such protocols have been entered in cases in this Court. (See Defs.’ 3/25/22 Opp. at 1 n.2.)

In unrelated litigation in another federal court in which Takeda was a party, a provision was

included in a protocol regarding email threading, as follows:

E-mail Threading: The producing Party may identify e-mail threads where all

previous emails which make up the thread are present in the body of the final e-

mail in the thread. Any party electing to use this procedure must notify all

receiving parties that e-mail thread suppression has been proposed to be

performed on a specified production and the Parties agree to meet and confer

regarding the format of this production, and reserve the right to seek Court

guidance on the issue should agreement not be reached.

2 The Sedona Conference is “a nonprofit legal policy research and education organization, has a working

group comprised of judges, attorneys, and electronic discovery experts dedicated to resolving electronic

document production issues.” Aguilar v. Immigr. & Customs Enf’t Div. of U.S. Dep’t of Homeland Sec., 255

F.R.D. 350, 355 (S.D.N.Y. 2008). “Since 2003, the Conference has published a number of documents

concerning ESI, including the Sedona Principles.” Id. “Courts have found the Sedona Principles instructive

with respect to electronic discovery issues.” Id. (citation omitted).

In re Actos (Pioglitazone) Prod. Liab. Litig., No. 6:11-MD-2299, 2012 WL 7861249, at *11 (W.D.

La. July 27, 2012). But, ESI protocols must be negotiated by the parties to address any legitimate

concerns the parties to the protocol may have and no similar agreement on email threading was

reached here.

Takeda’s exclusion of lesser included emails from production has resulted in the exclusion

of the metadata associated with earlier emails in a chain (which may be weeks or even months

prior to the last email in a chain).3 This exclusion materially has reduced Plaintiffs’ ability to search

for all correspondence within a date range. In addition, in certain email chains, only the sender

of particular emails earlier in a chain are reflected, and not the recipients of such emails. (See,

e.g., Pls.’ 3/28/22 Reply, Ex. C.) Finally, Takeda’s email threading has removed Plaintiffs’ ability

to see if anyone was blind-copied on lesser included emails, even though this information was

among the metadata the parties agreed in the Discovery Protocol to produce.

If the issue of email threading had been raised at the time the parties were negotiating

the Discovery Protocol, Plaintiffs may have been able to ameliorate the foregoing issues by

including, for example, a protocol provision requiring the exchange of certain metadata for any

excluded, lesser-included emails. However, Plaintiffs were not provided the opportunity to

negotiate how email threading might be accomplished in an acceptable manner. In the

circumstances presented, and based upon careful review of the parties’ submissions, the Court,

in its discretion, declines to impose email threading on Plaintiffs. Moreover, although the Court

recognizes that the production of earlier-in-time emails will cause some additional burden on

3 Plaintiffs included with their reply examples of email chains that spanned a four- to eight-month period.

(See Pls.’ 3/28/22 Reply, Exs. E, F & G.)

Takeda, the Court finds that any additional burden is not undue since Takeda agreed to the

Discovery Protocol and likely already has reviewed many of the emails at issue. Thus, Takeda shall

produce all responsive ESI to Plaintiffs, including earlier-in-time emails.

II. Privilege Log

The parties have exchanged drafts of a privilege log protocol, but have been unable to

agree to terms regarding how email threads should be logged. (See Defs.’ 3/25/22 Opp., Ex. 1.)

However, because the Court now is requiring Takeda to produce earlier-in-time emails, which

will affect the scope of the privilege log, the parties may be able to reach an agreement on the

privilege log issue. Accordingly, the parties are directed to meet and confer to seek to agree on a

revised privilege log protocol, taking into account the Court’s ruling above. The following

discussion is designed to provide guidance to the parties regarding the terms of such protocol.

Rule 26(b)(5) provides that a withholding party must “describe the nature of the

documents, communications, or tangible things not produced or disclosed—and do so in a

manner that, without revealing information itself privileged or protected, will enable other

parties to assess the claim.” Fed. R. Civ. P. 26(b)(5)(A). Rule 26(b)(5) needs to be read in

conjunction with Local Civil Rule 26.2(c). Local Civil Rule 26.2(c) provides:

Efficient means of providing information regarding claims of privilege are

encouraged, and parties are encouraged to agree upon measures that further this

end. For example, when asserting privilege on the same basis with respect to

multiple documents, it is presumptively proper to provide the information

required by this rule by group or category. A party receiving a privilege log that

groups documents or otherwise departs from a document-by-document or

communication-by-communication listing may not object solely on that basis, but

may object if the substantive information required by this rule has not been

provided in a comprehensible form.

S.D.N.Y. Local Civ. R. 26.2(c). The Committee Note to the Rule expands on the rule, as follows:

With the advent of electronic discovery and the proliferation of e-mails and e-mail

chains, traditional document-by-document privilege logs may be extremely

expensive to prepare, and not really informative to opposing counsel and the

Court. There is a growing literature in decisions, law reviews, and other

publications about the need to handle privilege claims in new and more efficient

ways. The Committee wishes to encourage parties to cooperate with each other

in developing efficient ways to communicate the information required by Local

Civil Rule 26.2 without the need for a traditional privilege log. Because the

appropriate approach may differ depending on the size of the case, the volume of

privileged documents, the use of electronic search techniques, and other factors,

the purpose of Local Civil Rule 26.2(c) is to encourage the parties to explore

methods appropriate to each case. The guiding principles should be cooperation

and the “just, speedy, and inexpensive determination of every action and

proceeding.” Fed. R. Civ. P. 1. See also The Sedona Cooperation Proclamation,

available at www.TheSedonaConference.org, whose principles the Committee

endorses.

Id., Committee Note; see also Sedona Elec. Doc. Prod. Principles, Comment 10.h. (“Logging large

volumes of withheld ESI is often costly, burdensome, time-consuming, and disproportionate to

the needs of the case.” (citing 1993 Advisory Comm. Note to Rule 26(b)(5)).

Accordingly, categorical privilege logs are appropriately used in this Court. “[A] categorical

privilege log is adequate if it provides information about the nature of the withheld documents

sufficient to enable the receiving party to make an intelligent determination about the validity of

the assertion of the privilege.” Rekor Sys., Inc. v. Loughlin, No. 19-CV-07767 (LJL), 2021 WL

5450366, at *1 (S.D.N.Y. Nov. 22, 2021) (citation omitted). The categorical privilege log found

acceptable by Judge Liman in Rekor contained groupings of multiple documents over discrete

date ranges to and from individuals at identified firms, listing the general subject matter. (See

Priv. Log, 19-CV-07767, ECF No. 180-1.)

Plaintiffs’ proposal of permitting categorical logging of emails only where all emails

“involved the same participants and subject matter” (see Pls.’ 3/22/22 Ltr. Mot. at 1) is

inconsistent with the foregoing principles, since there is no requirement that all participants be

identical for categorical logging to be appropriate. Takeda’s proposal of only logging the threaded

emails (see Defs.’ 3/25/22 Opp. at 2) also is inconsistent with the foregoing principles, since it is

unlikely that the log would contain sufficient information for Plaintiffs to assess the claim of

privilege for each email in the thread. However, now that the Court now is requiring the

production of all responsive ESI, the parties are directed to meet and confer with respect to the

privilege log protocol, consistent with the principles set forth above, and seek to agree to terms.

CONCLUSION

By reason of the foregoing, Plaintiffs’ Letter Motion is GRANTED IN PART and DENIED IN

PART. Takeda shall produce all responsive ESI to Plaintiffs, including earlier-in-time emails. In

addition, the parties are directed to meet and confer and seek to agree to terms of a privilege log

protocol. No later than April 15, 2022, the parties shall file to the ECF docket the agreed-upon

privilege log protocol, for approval by the Court. If the parties are unable to agree to the terms

of a privilege log protocol, then, no later than April 15, 2022, the parties shall file to the ECF

docket their competing proposals.

SO ORDERED.

Dated: New York, New York

March 30, 2022

frist A, Cann

STEWART D. AARON

United States Magistrate Judge

“For example, the parties may wish to consider the approach taken by the parties in Rekor. (See Priv. Log,

19-CV-07767, ECF No. 180-1.)