Amgen Inc. et al v. Sandoz Inc. et al

Filing 104

ORDER by Judge Maria-Elena James denying 93 Motion to Stay. (mejlc2S, COURT STAFF) (Filed on 8/24/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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AMGEN INC., ET AL.,

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Plaintiffs,
v.

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ORDER RE: MOTION TO STAY
DISCOVERY ORDER
Re: Dkt. No. 93

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SANDOZ INC., et al.,
Defendants.

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United States District Court
Northern District of California

Case No. 16-cv-02581-RS (MEJ)

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INTRODUCTION

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On July 17, 2017, the undersigned issued a Discovery Order finding, among other things,

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Plaintiffs Amgen Inc. and Amgen Manufacturing, Ltd. (together, “Amgen”) are entitled to

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discovery from Defendants Sandoz Inc., Sandoz International GmbH, Sandoz GmbH, and Lek

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Pharmaceuticals d.d. (collectively, “Sandoz”) regarding the anticipated approval, marketing, and

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sales of Sandoz’s proposed pegfilgrastim product. Disc. Order, Dkt. Nos. 262 (unredacted) & 266

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(redacted).1 On July 28, 2017, Sandoz filed a Motion to Separate Equitable Relief, which the

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Presiding Judge in this matter, the Honorable Richard Seeborg, is scheduled to hear on September

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14, 2017. Mot. to Separate, Dkt. No. 92. Sandoz requests the undersigned stay the Discovery

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Order until Judge Seeborg rules on that Motion. See Mot. Amgen filed an Opposition (Dkt. No.

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98) and Sandoz filed a Reply (Dkt. No. 103). The Court finds this matter suitable for disposition

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without oral argument and VACATES the September 7, 2017 hearing. See Fed. R. Civ. P. 78(b);

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Civ. L.R. 7-1(b). Having considered the parties’ argument, the relevant legal authority, and the

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The Discovery Order was filed in related case Amgen Inc. v. Sandoz Inc., Case No. 14-cv-4741RS (MEJ). Unless otherwise noted, citations to the record refer to documents filed in Case No.
16-cv-2581-RS (MEJ).

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record in this case, the undersigned DENIES the following Motion for the following reasons.
DISCUSSION

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Sandoz argues good cause exists to stay the Discovery Order because it will allow the
parties to “defer costly and potentially unnecessary discovery on Amgen’s injunctive relief claim”

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because “Amgen cannot seek injunctive relief unless it prevails on both validity and infringement

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of the ’878 patent.” Mot. at 3. Sandoz contends that if Judge Seeborg grants its Motion to

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Separate and if Sandoz prevails on either the validity or infringement issues, then the parties need

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not reach the issue of injunctive relief. Id. Moreover, given the “competitively sensitive” nature

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of the requested discovery, a stay “will avoid or reduce the risk of substantial competitive harm

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and prejudice to Sandoz.” Id. at 4. Finally, Sandoz argues Amgen will not be prejudiced by a

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United States District Court
Northern District of California

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stay: “[i]f [Judge Seeborg] grants Sandoz’s motion to separate, and if Amgen wins on liability at

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trial, it will have at least nine months to complete discovery and seek injunctive relief before

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pegfilgrastim is approved by the FDA and launched in or after 2019.” Id. at 4.

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A stay is not warranted at this point. Sandoz’s arguments are premised on two

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assumptions: that Judge Seeborg will bifurcate the injunctive relief from the March 2018 trial and

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that Amgen will not prevail on its validity and infringement claims. Neither outcome is certain at

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this point. Amgen needs discovery on the approval, marketing, and sales of Sandoz’s proposed

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pegfilgrastim product so it may seek its injunctive relief. Trial is approximately seven months

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away; reply expert reports are due on September 1, 2017; and expert discovery closes on October

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6, 2017. Dkt. No. 81 (Scheduling Order). In light of these rapidly approaching deadlines, to

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indefinitely delay discovery on the pegfilgrastim matter while the parties await Judge Seeborg’s

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ruling would prejudice Amgen’s ability to effectively prepare for trial if Judge Seeborg denies the

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Motion to Separate.

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Sandoz contends “[t]he requested stay is short” as “[i]t is likely that Judge Seeborg will

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either issue an order or provide substantive feedback at the [September 14] hearing (or earlier).”

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Reply at 2. But Judge Seeborg may also take the matter under submission after the hearing. In

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either case, if he declines to bifurcate the injunctive relief issue, Amgen will obtain the discovery

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on the eve of the close of expert discovery and less than six months before trial. See id. (if Judge
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Seeborg denies the Motion to Separate, “Sandoz estimates that it will need approximately 20 days

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to produce the written documents and will then work with Amgen’s counsel to schedule a

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deposition on the topic shortly thereafter according to the schedules of Amgen’s counsel and the

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witness”). This timeline does not reflect the many potential delays inherent in discovery in this

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type of case. Staying the Discovery Order may unfairly prejudice Amgen.

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Conversely, Sandoz does not explain why the parties’ Protective Order does not

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sufficiently protect against the improper use of this discovery. See Mot. at 4 (arguing stay will

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reduce the risk of competitive harm and prejudice to Sandoz); Reply; see also Protective Order ¶¶

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7.3, 9, Dkt. No. 68.

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United States District Court
Northern District of California

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Accordingly, the undersigned DENIES the Motion to Stay. The parties may stipulate to a
stay or raise this issue again if Sandoz’s Motion to Separate Equitable Relief is granted.
IT IS SO ORDERED.

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Dated: August 24, 2017
______________________________________
MARIA-ELENA JAMES
United States Magistrate Judge

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