Professional Documents
Culture Documents
SCIEIE PHARMA,
INC.,
at al.,
ORDER
This matter is before the Court on the letter application of plaintiff Court to Sciele Order Pharma, Inc. n/k/a Ltd. Shionogi, and Lupin Inc., asking the
defendants
Lupin
Inc. to produce settlement and licensing documents. 2012 Letter Brief Lupins response (LB) [D.I. at 1. [Doc. No. 580]
.
583]
the reasons to be discussed Shionogis application is GRANTED in part and DENIED in part. Rather than repeating
in that
detail
the
fact
and
procedural
background
of
this
matter
is
already
well
known
by
the
specific
recuests
at
2.
Biguanides, which is in the class of compounds that includes metformin, the active ingredient in Portamet; Other pharmaceutical products the treatment of diabetes; indicated for
3.
4.
Pharmaceutical products with extendedrelease characteristics; and Communications concerning or associated with these agreements, including negotiations, forecasts and analyses.
5.
Shionogi argues the requested documents are relevant to its claim for royalty damages. More specifically, Shionogi argues the
1120 1971)
1970),
446
F.2d 295
(2d
paid by the licensee for the use of other patents comparable to the
showing
a
and
has
not
even because
identified the
how
many
responsive
recuested cocumena s are rue uonf:Lctentiaiiov Order in effect adequately ororects Lunin s interests. if Luoin believes additional rotect ions are needed it cart file a seuarare
oduco ion
warranted
narticusar use of
or or at
oomparabl.e
businesses
to
allow
for
the
invention (LB)
anal000us inventions.
December 12,
requested patents
December
discovery
because and
it seeks
concerns
different
products,
and
19,
litigation
confidential
information.
is that
2012 LB at 3.
Given
produced.
If
the
Court
determines
that
some
or
all
of
the
patentee
is
entitled
to
damages
infringement,
than a reasonable royalty for the use made of the invention by the infringer. a 35 U.S.C. 284.
A recoverable royalty derives from
hypothetical
negotiation between a
patentee
and
the
1 ResQhet,com tile
.
Inc. v. Lansa, a
1150
As noteci,
of relevant
factors
to
examine
for
reasonable
royalty
calculation
is
set
forth
in
Georgia-Pacific,
ra.
Factor
refers
to
318 F.
Supp.
at
This factor examnes whether the licenses relied on by the in provinc damaces are sufficiently commarabJe to tzhe
Inc.
materitee
hypothetical license at issue in suit. v. Gateway, 12 Inc., 580 F.3d 1301, 1325-26
Factor
refers to the
allow 318 F.
for Supp.
the
use
of
the
invention
or
analogous
inventions. Whether
Lupins
licensing
comparable to those at issue in this case is not an easy task. A concise definition and involves is a elusive great because of the analysis The is fact-
specific Circuit
deal
discretion.
Federal analysis
recognizes
that
the
reasonable
royalty
S.A.
69 F.3d 512,
andy
517 to
(Fed. Cir.
Some
ceneral
orincioles,
however,
rhe
Courts at
analysis.
One,
to
be
discoverable
the
licensing
agreements issue,
they is
comoarable.
comoarability v.
interpreted broadly,
Paragon Trade
Jp.
_flQ
1OCO7.
Corp. 1994)
.
v.
915
F.
Supp.
1333,
1354
(0.
Del.
One court ruled that comparability simply requires that the oatents or comparable No. 2:07 See
technology.
1_v.OL
i
EZEM,
Inc.,
uJ)
AQ7 7 / /UIC,
*)
ij
Tax. March 2,
2010.
also
Lucent
Technologies,
Inc.,
F.3d
at
132526
(citation
of
fair
market
royalty,
the
form
of
license
Nevertheless, the
It is of
the
absence
circumstances,
which
here,
Shionogi
cannot
discover Lupins licenses simply to determine in the first instance if they are comparable to the patents at issue. If the Court
1337, ALceir,
1346
(Fed.
Cir.
2012) (citation Hd
1 omItted
or 1346
and may
26 b discoverable course of
2 )C)
Three, they or
iioens.e context of
agreements of the
are
whether
ordinary The
business
context
litigation.
3cc
eat
2009 ML 668695,
at *1
(N.D.
Cal,
March 13,
2009).
2012 LB at 6) In fact,
settlement stated,
[o]ur
appropriately
settlement
agreements can be pertinent to the issue of reasonable royalties. MTSG, arise Four, 675 out even F.3d of if at 1348. Indeed, the most reliable 594 the license at may
ResQNet.com, negotiations
Inc., are
F.3d best
872.
available
reasonable royalty evidence, other relevant agreements. nonprivileged matter deSense. that
.
this does not preclude discovery of Parties may obtain discovery of any is relevant to any partys claim or
Five,
reL5uestee obviously
documents that
are
discoverable. is a
The
aware
discovery
broader
Inc.
Fester indus,
785 F.2d
the
persuasive.
weight and admissibility of the evidence rather than whether the agreement is discoverable.
2.
Bicuanides
Jhe fact that a partially redacted copy of the agreement is publicly available (December 19, 2012 LB at 4-r) counsels for, not against, its discovery. If part of the agreement is already in the public domain there is no good reason to withhold the rest of the
includes metiormin,
2
December in
at
inuredient
is a biguanide, to involve
likely Id.
atents.
Shionoci
alleces
:nese a:Dree:ments
and provide
insight on how Lupin might structure a Fortamet license agreement. Id. Although a closer call, has demonstrated that the the Court is satisfied that Shionogi involvement of biguanides is
sufficiently comparable to warrant discovery of these agreements. Gerardi Decl. 5.a,1.2. As noted, the scope of discovery,
including determining whether a requested agreement is comparable, is interpreted broadly. include Lupin points unrelated December out that these agreements and LB, even Exhibit non1,
could
If Lupin
is correct are
in its
some
agreements
completely
irrelevant,
carries
attention
resources.
Shionogi,
however,
must
make
Shioncai argues that since Fortamet and the patents in suit concern the treatment of diabetes, all agreements concerning the
of
diabet
are
comoarable.
The
Court
finds
that
Shionogi has not satisfied its burden of showing these agreements are comparable. In turn, the Court is satisfied that Lupin has Hoffman bed.
same
not
reason
discussed
its
above,
of
the
Court
finds
that
that
these
Shionogi
satisfied
burden
showing
Even though the Court has ruled that Shionogis requests 3 and
be Ordered to produce licensing agreements for other drugs for the treatment of diabetes that also have extended release
pharmaceutical characteristics. Other Documents Having determined that Lupin shall produce some license
agreements,
the
Court
must
decide or
whether
Lupin with
should
produce
communications
concerning
associated
these
aereements
support
their
Compare
neattncare
supra
setrrernent
c.i-.
cc.
ccnua,
cc
ban.
April
30,
regarding denied
the the
patents-in-suit croducticn of
patents,
court thcu:h
serlement
communications
licensino
that the requested documents are or are not discoverable, the Court agrees with the Inc. approach taken Inc., in Charles 854 P. Supp. a E. Hill & Associates, 429 (E.D. Tex.
2d 427,
2012),
decision
stated that
case-by-case
approach
would be taken to determine whether the requested documents were discoverable. stated that The Court also agrees with the decision wherein it as a general rule license negotiations are less Id.
In addition, the Court agrees that negotiation documents primarily add heat and not light to an already difficult judicial chore, Id. As to
Shionogi s is
recuesfs,
the Court
is
satisfied that
the
sufficiently similar
to the
issues
in this
c...ase so as to recuire Lupin to oduce the reoussted cdocurnents. However, the same and is nor orue as or the recuesred biguanides drugs with
agreement(s)
the
agreement(s)
involving diabetes
10
determination that even if the requested documents are relevant, the minimal relevancy is outweighed by the cost, burden, prejudice and distraction the documents will generate. 26(b) (2) (C). Conclusion Accordingly, ORDERED this
th 28
for
all
the
foregoing
reasons,
IT
IS
HEREBY
Lupins settlement and licensing documents is GRANTED in part and DENIED in part; and IT IS FURTHER ORDERED that Lupin shall produce the licensing agreement between Lupin shall also produce the biguanide licensing agreement(s) and the licensing agreement(s) involving diabetes drugs with extended release pharmaceutical characteristics; and IT IS FURTHER ORDERED that only as to the Lupin shall produce communications concerning or associated with the
...
agreement[]
including
negotiations,
forecasts
and
analyses; and IT IS FURTHER ORDERED that Shionogis request for additional documents is DENIED; and IT IS FURTHER ORDERED that the foregoing documents shall be produced by February 11, 2013. sI Joel Schneider JOEL SCHNEIDER United States Magistrate Judge 11