Astrazeneca AB and Others v Pinewood Laboratories Ltd
|Mr. Justice Kelly
|05 May 2011
| IEHC 159
|05 May 2011
 IEHC 159
THE HIGH COURT
PRACTICE AND PROCEDURE
Dismissal of claim
Patent infringement suit - Divisional patent in suit - Discoverability of material concerning parent patent - Commercial List - Relevance - Necessity - Onus on moving party - Proportionality - Whether information can be obtained by less expensive and less time consuming method - Interrogatories or notices to admit facts - Difference between discoverability and admissibility - Relationship between parent patent and divisional patent - Discovery relevant and necessary as leading to line of inquiry - Difference between line of inquiry application and fishing expedition - Ryanair v Aer Rianta Cpt  IEHC 40, (Unrep, Kelly J, 14/4/2011); Schneider (Europe) GmbH v Conor Medsystems Ireland Ltd  IEHC 63, (Unrep, Finlay Geoghegan J, 2/2/2007); Medinol Limited v Abbott (Ireland)  IEHC 6, (Unrep, Finlay Geoghegan J, 19/1/2010); Medtronic Inc v Guidant Corporation  IEHC 37, (Unrep, Kelly J, 23/2/2007); Peruvian Guano  11 QB 55; Vickers Plc v Horsell Graphic Industries Ltd  RPC 421; Eli Lilly & Company v Apotex Inc  4 FCR 104; Napp Pharmaceutical Holdings Limited v Ratiopharm GmbH  EWCA (Civ) 252; Ranbaxy Laboratories Ltd v Warner Lambert Company  IESC 81, (Unrep, SC, 2/12/2005) considered - Rules of the Superior Courts 1986 (SI 15/1986), O 31 r 12 - Order for discovery granted (2010/7635P & 2010/265COM - Kelly J - 5/5/2011)  IEHC 159 ; Framus Ltd v CRH Plc ; Anglo Irish Bank Corporation Limited v Browne
Astrazeneca AB v Pinewood Laboratories Limited
Facts: The Court was asked to decide on a discovery application for five species of documents against the plaintiffs in a patent infringement suit. The judgment considered inter alia the question of the discoverability of material concerning a parent patent when its divisional patent was in suit, pursuant to O. 31, r. 12 of the Rules of the Superior Courts. The first plaintiff was the proprietor of an Irish Patent. The subject of the patent was a medicament. The defendant sought discovery of the prosecution files and documents in respect of inter alia the parent patent, evaluations as to the patentability of the patent, documents referring to the infringement and validity of the patent and documents concerning the consideration of any possible infringement. The Court had to consider the relationship between a divisional patent and a parent patent.
Held by Kelly J. that the Court did not view the application Of the defendant as a fishing expedition. The requests for discovery in this particular instance were legitimate and necessary.
RSC O.31 r12
RYANAIR PLC v AER RIANTA CPT
FRAMUS v CRH PLC
ANGLO IRISH BANK v BROWNE UNREP KELLY 14.4.2011 2011 IEHC 140
SCHNEIDER (EUROPE) GMBH v CONOR MEDSYSTEMS IRELAND LTD UNREP KELLY 2.2.2007 2007/55/11697 2007 IEHC 63
MEDINOL LTD v ABBOTT IRELAND & ORS UNREP FINLAY GEOGHEGAN 19.1.2010 2010/33/8372 2010 IEHC 6
MEDTRONIC INC & ORS v GUIDANT CORPORATION & ORS UNREP KELLY 23.2.2007 2007/39/8203 2007 IEHC 37
COMPAGNIE FINANCIERE ET COMMERCIALE DU PACIFIQUE v PERUVIAN GUANO CO 1882-83 11 QBD 55
VICKERS PLC v HORSELL GRAPHIC INDUSTRIES LTD 1988 RPC 421
ELI LILLY & CO v APOTEX INC 2006 4 FCR 104
NAPP PHARMACEUTICAL HOLDINGS LTD v RATIOPHARM GMBH 2009 All ER (D) 20
RANBAXY LABORATORIES LTD & ORS v WARNER LAMBERT COMPANY
JUDGMENT of Mr. Justice Kelly delivered on the 5th day of May, 2011
This is my decision on an application by the first defendant (Pinewood) for discovery of five species of documents against the plaintiffs (Astra) in this patent infringement suit. The judgment deals, inter alia, with the question of the discoverability of material concerning a parent patent when its divisional patent is in suit. That issue has not arisen in this jurisdiction before, as far as I am aware.
The two plaintiffs are bodies corporate which have their registered offices in Sweden and the United Kingdom respectively.
Pinewood is an Irish company with its registered office in Co. Tipperary.
The second defendant (Krka) is registered in Slovenia.
The first plaintiff is the proprietor of Irish Patent No. 1020461 (the patent) which is derived from European Patent No. EP1020461 (the 461 patent).
The second plaintiff is authorised to sell and supply the subject of the patent in this State.
The subject of the patent is a medicament for the inhibition of gastric acid secretion which is manufactured through use of a magnesium salt with certain chemical characteristics as claimed in claim 1 of the patent. This is marketed by Astra in this State using the name 'Nexium'.
It is alleged that the defendants are infringing the patent by, inter alia, putting on the market in the State products which inhibit gastric acid secretion using the mark 'Nexazole' and 'Esomeprazole Krka'. These products are sold in 20mg and 40mg gastro-resistant tablets.
On this application, I am concerned only with Pinewood. It does not manufacture the products but accepts that it sells the product 'Nexazole' in the State. It denies that it sells the product 'Esomeprazole Krka'. It denies that 'Nexazole' infringes the patent and it counterclaims that the patent ought to be revoked on the grounds of want of novelty and inventive step, insufficiency and added matter.
It is to be noted that there are revocation proceedings in respect of the 461 patent which are taking place in at least four other EU Member States. There are also infringement proceedings taking place elsewhere in respect of the 461 patent.
Before considering each of the discovery requests it is desirable that I should shortly state the principles which are applicable to the determination of disputes on discovery.
Under O. 31, r. 12 of the Rules of the Superior Courts, an applicant for discovery has to demonstrate that the documents sought are both relevant and necessary for the fair disposal of the case or to save costs.
The onus of establishing relevance and necessity is on the moving party.
The court, in considering an application for discovery, must also bear in mind the concept of proportionality. That involves a consideration of the extent or volume of the documents to be discovered and the degree to which the documents are likely to advance the case of an applicant or damage the case of his opponent. The public interest in the proper administration of justice is not confined to the relentless search for perfect truth. (See the observations of Fennelly J. in Ryanair Plc v. Aer Rianta Cpt and those of Murray J. in Framus v. CRH Plc .)
One further matter to be considered is the capability of obtaining the desired information in a less costly and less time consuming manner by the use of interrogatories or notices to admit facts (see my judgment in Anglo Irish Bank v. Browne  IEHC 140).
The general principles which I have just mentioned are as applicable to discovery in patent actions as in any other actions. In this regard see the decisions of Finlay Geoghegan J. in Schneider (Europe) GmbH v. Conor Medsystems Ireland Limited (2 nd February, 2007) and in Medinol Limited v. Abbott (Ireland)  IEHC 6 and my own decision in Medtronic, Inc v. Guidant Corporation  IEHC 37.
Two particular citations from those decisions have a relevance to the instant application.
In Medtronic, I pointed out that the observations of Brett L.J. in the Peruvian Guano Case  11 Q.B.D. 55 remain the guiding norm. He said that the following are relevant:-
"Every document relating to the matters in question in the action, which not only would be evidence upon any issue, but also which, it is reasonable to suppose contains information which may - not which must - either directly or indirectly, enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary."
In Schneider, Finlay Geoghegan J. noted the observations of Whitford J. in Vickers PLC v. Horsell Graphic Industries Limited  R.P.C. 421 when considering the relevance of documents on the US application file to English patent proceedings where he said:-
"My opinion as regards documents is this. I go no further than saying that quite plainly vast numbers of documents are filed in connection with foreign applications, and mostly they are going to be irrelevant. I entirely accept that opinions which may have been expressed or experiments which may have been conducted in connection with foreign applications are at the end of the day not necessarily likely to be conclusive and may indeed prove to be of only limited importance, but they do assist a defendant. They disclose the line which may be taken in connection with the defence to the attack upon the validity which is going to be put forward. They disclose the approach to the issue of infringement."
Finally, it is important not to confuse discoverability with admissibility. In Schneider, Finlay Geoghegan J. drew attention to the obiter dicta of Aronovitch P. in Eli Lilly & Company v. Apotex Inc.  4 FCR 104 where he said:-
"Discovery is not be confused with admissibility. The fact that the test for the determination of a ground of invalidity is objective, and that the knowledge or opinion of the inventor may not be relevant in the sense...
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