ELI LILLY AND COMPANY et al v. PERRIGO COMPANY et al

Filing 253

ORDER granting in part 230 Motion to Compel as set forth (see Order). Signed by Magistrate Judge Denise K. LaRue on 4/1/2016. (CBU)

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF INDIANA,
INDIANAPOLIS DIVISION

ELI LILLY AND COMPANY, et al.,
Plaintiffs,
CAUSE NO.

vs.

1:13-cv-851-SEB-DKL

PERRIGO COMPANY, et al.,
Defendants.
ORDER
Plaintiff Eli Lilly and Company’s Motion To Compel
Production of Documents [doc. 230]
Plaintiff Eli Lilly and Company moves for an order compelling the Perrigo
Defendants (“Perrigo”) to produce previous expert reports that were prepared by two of
Perrigo’s experts in the present case, Walter G. Chambliss and Peter J. Stahl (the
“Experts”), and that were submitted by Perrigo in a previous suit, Unimed
Pharmaceuticals, LLC, vs. Perrigo Co., No. C.A. 1:13-cv-236-LPS, in the United States District
Court for the District of Delaware. In that suit, Unimed Pharmaceuticals, LLC, sued
Perrigo for infringement of its transdermal testosterone product, AndroGel, for treating
testosterone deficiency. Perrigo introduced the Experts’ reports to support its invalidity
defense in that action. In support of its defenses in the present suit, Perrigo has produced
expert reports prepared by the same Experts in which, according to Lilly, they extensively
referred to and relied on the AndroGel product in relation to their opinions on, e.g., the
knowledge of a person of ordinary skill in the art at the relevant times and the teachings
of prior art.

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Lilly wants the Experts’ AndroGel expert reports for cross-examination and
possible impeachment purposes and it wants them four days before the Experts are
scheduled to be deposed on April 8 and 11, 2016. Perrigo objects on the grounds that (1)
Lilly’s motion is untimely, having known in January, 2016, that Perrigo objected to
producing the reports; (2) the AndroGel expert reports are irrelevant because they
concern different patents, accused products, priority dates, and owners; because they are
not admissible evidence; and because Lilly only speculates that the reports might contain
useful cross-examination material; (3) the AndroGel reports contain the designated
confidential information of Perrigo, the Unimed plaintiffs (and, possibly, other third
parties), and are subject to a protective order issued in the Unimed litigation which
requires Perrigo to obtain the plaintiffs’ approval of all redactions before producing the
reports in other litigation; and (4) the burdens of reviewing and redacting over 1,800
pages of the reports, especially on such short notice, does not outweigh any slight
possible relevance. Lilly has represented that it is not interested in the confidential
information of any party or third-party; it is interested in only the Experts’ invalidity
opinions regarding AndroGel.
The Court finds that the Experts’ AndroGel reports introduced in the Unimed
litigation are relevant and discoverable by Lilly for the reasons that it asserts. However,
the Court recognizes that the previous protective order must be complied with, the
redactions do present a burden, and there are significant time pressures in this case.
Therefore, the Court rules:

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1. The Court orders Perrigo to produce the Experts’ AndroGel reports that were
introduced in the Unimed litigation. Perrigo shall redact its own confidential information
and shall obtain the redactions of the Unimed plaintiffs and any redactions of third parties
pursuant to the Unimed protective order.
2. In light of the short time interval before the Experts’ scheduled depositions, the
Court does not order Perrigo to produce the reports by Lilly’s requested deadline of five
business days before the Experts’ depositions. The parties shall meet and confer on a
deadline for production, no later than thirty days from the date of this Order. If Perrigo
cannot produce the Experts’ AndroGel twenty-four hours before each expert’s
deposition, then, after receiving that expert’s AndroGel reports, Lilly may request leave
to conduct a supplemental deposition limited to the subject of the AndroGel reports. If
Perrigo produces an Expert’s report twenty-four hours prior to his deposition, then Lilly
may not conduct a supplemental deposition of that Expert.
Lilly’s Motion To Compel Production of Documents [doc. 230] is GRANTED in part
as set forth above.
SO ORDERED this 1st day of April, 2016.

Distribution to all ECF-registered counsel of record via ECF-generated e-mail.
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