The High Court has finalised the wording and time limits for discovery orders in two patent proceedings brought by Norton (Waterford) Limited, trading as Teva Pharmaceuticals Ireland, against Boehringer Ingelheim companies. The orders concern challenges involving patents for inhalation capsules and tiotropium-related compounds, as well as a supplementary protection certificate (SPC).
In a judgment delivered on 6 May 2015, Mr Justice Cregan supplemented an ex tempore decision he had given on 27 March after hearing Teva’s discovery motions. The parties returned to court on 27 and 30 April to address disagreements over the wording of the orders and the periods covered. The judgment resolved those remaining issues; it did not determine the patent or SPC validity challenges themselves.
In the proceedings concerning European patent EP 1379220, the court limited the first category to documents contained in the patent applications filed with the European, Irish and German patent offices, along with specified correspondence. It rejected Teva’s broader interpretation of “all documents relating to” the applications, explaining that the order did not reach documents created before an application began. The disclosure period for that category runs from 1 June 2001 to the patent grant on 21 December 2005.
For inventor notebooks and related material, the court ordered disclosure of specified U reports, documents in two Spiriva project folders, documents in 20 hard-copy files identified in a UK disclosure report, and relevant portions of the named inventors’ and assisting laboratory technicians’ notebooks. The notebook period runs from 1 June 1996 to 21 December 2005. The court also ordered disclosure of documents showing inventors’ consideration of prior art listed in Teva’s particulars of objection, from 1 June 1996 to 21 December 2005. It excluded the broader wording covering material “related to” that prior art and consideration by or on behalf of the respondent company. A separate category covers validity documents shown or sent to, or received from, retained experts, consultants, in-house counsel or patent attorneys over the same period. The respondent must also disclose documents it will rely on to support the patent’s validity; no time limit was set for that category.
In the second proceeding, concerning Irish patent 622528 and SPC 2002/021, the court ordered disclosure of specified patent and SPC application files and related correspondence, inventor notebook extracts, marketing authorisations, and documents concerning SPC validity. Time limits vary by category: for example, the notebook period runs from 16 September 1987 to 12 October 1995, while the SPC validity documents cover 14 August 1997 to 20 October 2004. The respondent must also disclose documents it will rely on to support the SPC’s validity, with no time limit specified.