The High Court has ordered AstraZeneca AB to provide discovery in four of five disputed categories in proceedings over the alleged invalidity of an Irish patent for an asthma treatment drug.
Mr Justice Barrett’s 1 April 2014 judgment concerned an application by the petitioner under Order 31, Rule 12 of the Rules of the Superior Courts. The underlying proceedings concern whether Irish patent EP 1085877, registered in AstraZeneca AB’s name, is invalid. The judgment addressed discovery only; it did not decide the patent’s validity.
The court said the discovery rules in Ireland appeared broader than those in England, where substantially equivalent proceedings were expected to be heard. It rejected the suggestion that discovery here should be confined to material obtained in England, noting that the Irish case was governed by Irish law and procedure.
The court ordered discovery of documents relating to the patent applications and prior art, subject to a time constraint tying the documents to applications for the patent. It also ordered documents concerning the patent’s conception, development and reduction to practice, narrowing the request for co-workers’ material to those who directly assisted the named inventor, Tommy Ekstrom.
A third category, concerning consideration of prior art and its potential effect on patentability, was ordered as sought. The court also allowed discovery of documents about patent validity shown or sent to experts, consultants, in-house counsel or patent attorneys retained by the respondent. That order excludes privileged documents and carries the same patent-application time constraint as the first category.
The court refused, for now, to order a fifth category covering documents the respondent would rely on to establish the patent’s validity. It said it was unclear what additional documents that category would produce and accepted that it was premature because the respondent had not yet determined what it would rely on at trial. Counsel for the respondent undertook to disclose any such documents outside the ordered categories alongside its expert reports.
The judgment set out the discovery test as requiring relevance and necessity, with proportionality also relevant. It did not determine the substantive patent dispute or order discovery of the fifth category at this stage.