Teva Pharma Australia Pty Ltd v Boehringer Ingelheim Pharma GMBH & Co. KG [2019] FCA 625

Teva Pharma Australia Pty Ltd v Boehringer Ingelheim Pharma GMBH & Co. KG [2019] FCA 625

Discovery was ordered for categories 1, 3, 4, and 5 as sought by Teva, being relevant albeit of secondary significance in the context of inventive step challenges; the categories were found to be targeted, proportionate and within a tight time frame. Category 2 was denied as insufficiently targeted. The respondent is only required to discover documents after a reasonable search and within its control. Costs were ordered in favour of the applicant.

Jurisdiction
Australia
Judgment Date
03 May 2019
Procedural Posture
Interlocutory Application for Discovery in Patent Litigation / Post Hearing, Reasons for Judgment and Orders on Discovery Application
Outcome
Application granted in part: Discovery ordered for categories 1, 3, 4, 5; category 2 refused; costs awarded to applicant.
Legal Topics
['discovery' 'inventive Step' 'patent Validity']
['intellectual Property' 'patent Law'] ['discovery' 'inventive Step' 'patent Validity']

Case Brief

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Procedural Posture

Interlocutory Application for Discovery in Patent Litigation / Post Hearing, Reasons for Judgment and Orders on Discovery Application

Legal Issues

  1. 1 ['Whether discovery of documents relating to development of alleged invention should be ordered' 'Relevance and proportionality of requested discovery in patent validity challenge']

Ratio Decidendi

Discovery was ordered for categories 1, 3, 4, and 5 as sought by Teva, being relevant albeit of secondary significance in the context of inventive step challenges; the categories were found to be targeted, proportionate and within a tight time frame. Category 2 was denied as insufficiently targeted. The respondent is only required to discover documents after a reasonable search and within its control. Costs were ordered in favour of the applicant.

Court Disposition

Application granted in part: Discovery ordered for categories 1, 3, 4, 5; category 2 refused; costs awarded to applicant.

Orders

  • ['By 4.00 pm on 2 August 2019, the respondent give discovery of documents falling within categories 1, 3, 4 and 5.' 'Discovery limited to documents of which the respondent is aware after a reasonable search and in its control.' "Respondent pay applicant's costs of interlocutory application dated 5 April 2019."...