The High Court has granted Pinewood Laboratories’ application for discovery of documents in its patent dispute with AstraZeneca, finding that material about patent validity and possible infringement could be relevant to Pinewood’s defence and counterclaim.
In a judgment delivered on 5 May 2011, Mr Justice Kelly considered five disputed categories of documents. He ruled in Pinewood’s favour on categories 5, 6, 9 and 11. He found category 2 relevant in principle, but made no separate order for it because Pinewood had offered to drop that request if category 6 was granted. The judge said he would hear counsel on the form of the order.
The suit concerns Irish Patent No. 1020461, which AstraZeneca AB owns. AstraZeneca UK Limited is authorised to sell and supply the patented medicine in Ireland, marketed as Nexium. The plaintiffs allege that products sold as Nexazole and Esomeprazole Krka infringe the patent. Pinewood accepts that it sells Nexazole in Ireland, denies selling Esomeprazole Krka, and denies infringement. It counterclaims that the patent should be revoked for lack of novelty and inventive step, insufficiency and added matter. The judgment addresses only Pinewood’s discovery application, not those underlying claims.
The judge held that Pinewood was entitled to documents evaluating patentability or validity both before and after the patent was granted. He also ordered discovery of documents concerning infringement and validity issues relating to the patent and its parent patent that had been shared with or received from specified experts, consultants, in-house counsel or patent attorneys retained by AstraZeneca AB. AstraZeneca had agreed to produce some material relating to the Irish patent but opposed production concerning the parent patent.
The court also ordered documents evaluating possible infringement by the defendants, beyond product testing and resulting reports already offered for discovery. For category 11, it ordered documents about the parties’ contentions in actual or threatened infringement or revocation proceedings involving non-parties. The judge said those documents could provide a legitimate line of inquiry into the invalidity counterclaim; he rejected the objection that the request was a fishing expedition.
The parent patent, European Patent No. EP 0652872, had been revoked for lack of inventive step. The judgment records that revocation proceedings concerning Irish Patent No. 1020461 were taking place in at least four other EU member states, as well as infringement proceedings elsewhere. The judge considered the parent and divisional patents closely related because they shared basic disclosure, although each stood on its own merits and had different claims. He stated that discovery and admissibility are distinct questions.