The High Court has ordered discovery of specified documents in a dispute between Novartis Pharma AG and Eli Lilly over a Novartis-owned patent concerning antibodies that act against IL-17A/F. The ruling dealt with four discovery motions across a patent revocation action and an infringement action; it did not decide whether the patent is valid or infringed.
Eli Lilly brought the revocation action in April 2021, arguing that the patent lacked novelty, was obvious and was insufficient. Novartis separately sued over Eli Lilly’s Taltz product, alleging infringement. Eli Lilly disputes infringement and challenges the patent’s validity. It also alleges that Novartis abused a dominant position and argues that an injunction would cause disproportionate hardship to patients. Those claims were not determined in this discovery judgment.
In the revocation action, the court granted Eli Lilly’s first four categories of discovery from Novartis, but limited the period to four years around the patent’s priority date, rather than the roughly 20 years sought. It also ordered discovery of specified research and supporting material connected with a 2021 study by Novartis staff, for a period beginning three years before its publication. A further category concerning experiments connected with European Patent Office opposition proceedings was agreed, with Novartis to list privileged documents in the ordinary way.
The court refused Novartis’ broad requests for documents from Eli Lilly concerning its invalidity challenges, except for documents Eli Lilly intends to rely on, which are to be identified when witness statements are delivered. The court also declined to order several other categories seeking material created from 12 February 2017, accepting that such documents would have been created in contemplation of litigation and that listing privileged documents would add time and expense without sufficient benefit.
In the infringement action, the court accepted Eli Lilly’s product description, including the amino acid sequence of ixekizumab and reports of specified experiments, as sufficient discovery for two Novartis categories seeking product details and infringement analysis. It postponed disclosure of internal arrangements concerning manufacture and supply until that information becomes necessary, and refused a request about which Eli Lilly group company holds Taltz’s marketing authorisation.
The court also ruled on market-related discovery, including sales, competitive analysis and patient-switching material, with changes to the scope of the categories. It ordered Eli Lilly to provide specified categories sought by Novartis and ordered categories sought by Eli Lilly concerning Novartis’ market position, patent portfolio and related matters, subject to limits set out in the judgment. Some categories were recorded as agreed.
Justice Twomey directed the parties to try to agree the outstanding terms of the order. If they could not, the matter could return before final orders were issued.