Genentech, Inc. et al v. Sanofi-Aventis Deutschland GMBH et al

Filing 203

SIXTH DISCOVERY ORDER. Signed by Magistrate Judge Bernard Zimmerman on 11/19/2009. (bzsec, COURT STAFF) (Filed on 11/19/2009)

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 v. SANOFI-AVENTIS DEUTSCHLAND GMBH, et al., Defendant(s). GENENTECH, INC., et al., Plaintiff(s), ) ) ) ) ) ) ) ) ) ) ) UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA

No. C08-4909 SI (BZ) SIXTH DISCOVERY ORDER

Following a telephone hearing at which all parties were represented by counsel, IT IS HEREBY ORDERED as follows: 1. Sanofi-Aventis Deutschland GmbH ("Sanofi") requests

detailed discovery of RituxanŽ sales in order to prove the commercial success of its patented process. Ordinarily, a

"patentee asserts that commercial success supports its contention of nonobviousness . . . ." Demaco Corp. v. F. Von

Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The patentee must prove a legally and factually

sufficient connection, or nexus, "between the proven success and the patented invention . . . ." Id. The purpose of

introducing evidence of commercial success is to prove that 1

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"the commercial success was of the patented invention itself." Id. at 1394. (emphasis added). In this case, Sanofi seeks detailed sales information of the infringing product in order to prove non-obviousness of the patented process. Sanofi has not persuaded me that

discovery of sales information of an infringing product is relevant to prove the non-obviousness and commercial success of the patented process. Commercial success of the allegedly

infringing product could be based on any number of factors, other than infringement. In any event, defendant apparently

has information that Genentech has $2 billion annual sales of RituxanŽ in the United States, evidence of the product's commercial success. Defendant has not articulated how the

other information it seeks, such as profit margins, is relevant to obviousness. Tech Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353 (Fed. Cir. 1999) on which defendant relies, is distinguishable. First, that case did not address discovery.

Second, the plaintiff in that case had already established infringement. Contrary to Sanofi's assertion, Tech Air does

not stand for the general proposition that in a bifurcated trial, sales information of an infringing product is discoverable prior to the damages phase. Defendant's motion

to compel discovery of further sales information is DENIED. 2. Sanofi further requests discovery of all products

that employ the HCMV enhancer to prove the unexpected results of their patented process. As an initial matter, this request

suffers from the same defect as Sanofi's request for detailed 2

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sales information of the infringing product.

In the ordinary

case, a "patent challenger makes a prima facie showing of obviousness" and "the owner may rebut [this] based on unexpected results by demonstrating that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected." Proctor & Gambel Co. v. Teva Pharmaceuticals

USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) (emphasis added) (internal citations omitted). Sanofi has not persuaded me that any unexpected results plaintiffs experienced with any of their products is relevant to the issue of obviousness. In any event, to resolve this

dispute, Genentech has agreed to produce the requested discovery for RituxanŽ, the accused product. If Sanofi cannot

show that Genentech experienced unexpected results with RituxanŽ, it is hard to see how it can succeed by showing unexpected results with products not accused of infringement. If Sanofi finds evidence of unexpected results in the RituxanŽ discovery and believes it still needs evidence of other products, it may renew its motion at that time. Given the

cost of producing the requested information, calculated at almost a million dollars, and it questionable relevancy, this request is DENIED as premature. See FRCP 26(b)(2)(c)(iii).

Genentech shall produce all documents concerning its use of an HCMV enhancer in its production of RituxanŽ by /// /// /// 3

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5:00 p.m. on December 1, 2009. Dated: November 19, 2009 Bernard Zimmerman United States Magistrate Judge
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