Norton (Waterford) Ltd t/a Teva Pharmaceuticals Ireland v Boehringer Ingelheim Pharma Gmbh & Company Kg (No.1) and Others
| Jurisdiction | Ireland |
| Judge | MR. JUSTICE CREGAN |
| Judgment Date | 27 March 2015 |
| Neutral Citation | [2015] IEHC 318 |
| Court | High Court |
| Date | 27 March 2015 |
[2015] IEHC 318
THE HIGH COURT
BETWEEN
AND
AND
AND
Intellectual Property – Revocation of patent – O. 31, r.1 2 of the Rules of the Superior Courts – To what extent discovery of documents permissible – Proceedings in different jurisdictions – Relevancy
Facts: The petitioner in the first proceedings sought an order for revocation of Irish Patent granted for the protection of the Spiriva product used for the treatment of chronic obstructive pulmonary disease alleging lack of inventive step and being obvious to a person skilled in the art and discovery of documents thereof. The petitioner in the second proceedings sought an order for discovery of certain categories of documents.
Mr. Justice Cregan J. granted orders for the discovery of documents within specified time limits relating to the patent application filed with the European Patent Office and Irish Patent Office, laboratory notebooks of the named inventors, documents regarding consideration given by the inventors to the relevant Patent and documents regarding validity of the relevant Patent. The Court was of the view that since similar proceedings were being initiated in the Courts in the UK, it would not be necessary to grant an order for a vast category of documents. The Court opined that under o. 31, r. 12 of the Rules of the Superior Courts, the documents which were relevant, proportionate and necessary to the fair disposal of a case were discoverable. The Court was of the view that discovery of documents of vast magnitude covering the stage of conception of a patent to its grant must not be ordered in lieu of the public interest because such an approach would likely put hardship on the opposite party, that too when the matter was being litigated in different jurisdictions.
1. This is an application by the Petitioner in these proceedings seeking discovery of certain categories of documents from the Respondent in relation to patent proceedings brought by the Petitioner in proceedings, Record No. 2014/No. 2 PAP.
2. In these proceedings the Petitioner seeks to have the grant of Irish Patent No. (IE) 179220 to Boehringer Ingelheim revoked. The Particulars of Objection set out in the Notice of Objections filed on 23 October 2014, by the Petitioner, set out the following Particulars of Objection to this patent:
2 "1. None of the claims of the Patent is in respect of a patentable invention in that the subject matter thereof did not involve an inventive step in that the same was obvious to a person skilled in the art having regard to the matter forming the state of the art at the priority date of the Patent."
3. In that regard the Petitioner relies upon two articles as forming part of the state of the art;
2 "2. That insofar as the claims of Patent are not obvious in the light of the prior art, the Petitioner will say that the claims of the Patent represent an arbitrary selection of a level of moisture content in the claimed capsules.
3. Thirdly, that the specification of the Patent does not disclose the alleged invention clearly and completely enough for it to be performed by a person skilled in the art."
4. Points of defence have been filed by the Respondent and all of the allegations have been denied and put in issue.
5. The Petitioner wrote a letter on 12 January 2015 requesting discovery of five categories of documents. The Respondent replied on 26 January 2015 rejecting all five categories. On 4 February 2015 the Petitioner issued this motion, grounded on the affidavit of Gerard Kelly and various replying affidavits were furnished by the respondents.
6. The legal principles applicable to an application of this nature have been set out in a number of cases. In Medtronic Inc. [2007] IEHC 37, Kelly J dealt with a discovery application in a patent case and at page 7 of his decision he reviewed the legal principles applicable in a case of this type. He referred to his earlier decision in PJ Carroll -v- Minister for Health (Unreported High Court 9 December 2005). (His decision on this issue was upheld on appeal by the Supreme Court where Geoghegan J recorded that the parties had accepted that Kelly J had set out the correct principles. These principles have been reproduced in full and applied by Finlay - Geoghegan J in Schneider Europe -v- Conor Medical Systems, 2006 IEHC 63).
7. Under Order 31 Rule 12 of the Rules of the Superior Courts an application for discovery must establish that the documents sought are relevant and necessary for the fair disposal of the case or to save costs.
8. On the question of relevance, as Kelly J points out (at page 8 of his decision)
"On the question of relevance the judgment of Brett LJ in the Peruvian Guano case remains 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'."
9. In Ryanair -v- Aer Rianta, [2003] 4 IR 464, Fennelly J, in the course of his judgment, described that statement as remaining: "The universally accepted test of what is the primary requirement for discovery, namely the relevance of the documents sought."
10. In Framus -v- CRH [2004] 2 ILRM 439 the Supreme Court approved the approach of McCracken J in Hannon -v- Commissioner of Public Works [2001] IEHC 59, where he dealt with the question of relevance as follows:
2 "1. The court must decide as a matter of probability as to whether any particular [document] is relevant to the issues to be tried. It is not for the court to order discovery simply because there is a possibility that documents may be relevant.
2. Relevance must be determined in relation to the pleadings in the specific case. Relevance is not to be determined by reasons of submissions as to alleged facts put forward in affidavits in relation to the application for further and better discovery unless such submissions relate back to the pleadings or already discovered documents. It should be noted that Order 31 Rule 12 of the Superior Court Rules specifically relates to discovery of documents 'relating to any matter in question therein'.
3. It follows from the first two principles that a party may not seek discovery of a document in order to find whether the document may be relevant. A general trawl through the other party's documentation is not permitted under the rules.
4. The court is entitled to take into account the extent to which discovery of documents might become oppressive and should be astute to ensure that the procedure of discovery is not used as a tactic in the war between the parties."
11. Kelly J also dealt with the question of necessity in this decision where he stated that:
"The topic of necessity can be summarised as follows; The court in exercising the discretion conferred upon it by Order 31 Rule 12 must have regard to the issues in the action as they appear from the pleadings and the reasons furnished by the applicant to show that the specified categories of documents are required. The court should also consider the necessity for the documents having regard to all the relevant circumstances, including the burden, scale and cost of the discovery. It should also be willing to confine categories of documents sought to what is genuinely necessary for the fair disposal of the litigation. Alternative means of proof which are open to the applicant should also be considered. In some circumstances an order which is too wide can constitute an obstacle to the fair disposal of proceedings rather than the converse. As was said by Murray J in the Framus case:"
'I think it follows that there must he some proportionality between the extent or volume of the documents to be discovered and the degree to which the documents are likely to advance the case of the applicant or damage the case of his or her opponent in addition to ensuring that no party is taken by surprise by the production of documents at a trial. That is not to gainsay in any sense that the primary test is whether documents are relevant to the issues between the parties. Once that is established it will follow in most cases that their discovery is necessary for the fair disposal of those...
To continue reading
Request your trial