The Court of Appeal allowed part of Boehringer Ingelheim Pharma GmbH and Co KG’s appeal against a High Court discovery order in proceedings brought by Norton (Waterford) Limited, trading as Teva Pharmaceuticals Ireland, to revoke an Irish patent relating to inhalation capsules.
The court upheld discovery of the patent application files and related correspondence with the European, Irish and German patent offices. It also upheld the requirement that Boehringer provide documents it intended to rely on to support the patent’s validity before Teva prepared its witness statements. But it set aside the order for discovery of three other categories: development records and laboratory notebooks; documents about the inventors’ consideration of cited prior art; and validity-related documents shared with experts, consultants or legal advisers.
The patent, EP (IE) 1379220, was part of the protection for Boehringer’s Spiriva product. Teva’s pleaded grounds for revocation were obviousness over three named pieces of prior art and lack of sufficiency or plausibility. Boehringer had applied to amend the patent, and Teva had indicated it would object. The Court of Appeal said entitlement to amend would be determined at the petition hearing.
The appeal concerned a High Court order made on 19 May 2015. The Court of Appeal held that all four disputed categories were relevant under the Irish “line of inquiry” test. It nevertheless found that relevance did not by itself make discovery necessary for a fair and cost-effective disposal of the case.
For the patent file, the court found the documents could provide lines of inquiry about prior art and questions raised by patent offices. Boehringer had not identified particular difficulties, volume concerns or confidentiality problems with producing that category. The court therefore left that part of the order in place.
For categories 2 and 3, the court considered the potential benefit to Teva against the likely cost and time involved in searching a large volume of material across multiple sources. It also took account of Teva’s decision to pursue a related UK revocation case without seeking equivalent disclosure. The court concluded that discovery of those categories was not necessary for the fair disposal of the Irish proceedings.
The court reached the same conclusion on category 4, which could involve significant work over a nine-year period and might include privileged material. It said Teva could obtain independent scientific and legal advice and did not need access to Boehringer’s non-privileged advice for the case to be fairly disposed of.
The court rejected Boehringer’s appeal on the timing of category 5 documents, finding the trial judge was within his case-management discretion. The formal order allowed the appeal in part and vacated the High Court discovery orders for categories 2, 3 and 4. The patent revocation petition itself was not decided in this appeal.