Roxane Laboratories, Inc. v. Abbott Laboratories
Filing
128
OPINION AND ORDER denying (115 in case 2:12-cv-00312-MHW-NMK) Plaintiff Roxane Laboratories, Inc's Motion to Compel. Signed by Magistrate Judge Norah McCann King on 9/3/2013. Associated Cases: 2:12-cv-00312-MHW-NMK, 2:13-cv-00645-MHW-NMK (er1)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
ROXANE LABORATORIES, INC.,
Plaintiff,
vs.
Civil Action 2:12-cv-312
Judge Watson
Magistrate Judge King
ABBOTT LABORATORIES, et al.,
Defendants.
ABBVIE, INC.,
Plaintiff,
Civil Action 2:13-cv-645
Judge Watson
Magistrate Judge King
vs.
ROXANE LABORATORIES, INC.,
Defendant.
OPINION AND ORDER
This matter is before the Court for consideration of plaintiff
Roxane Laboratories, Inc.’s Motion to Compel Responses to
Interrogatories (“Plaintiff’s Motion to Compel”), Doc. No. 115,
defendant AbbVie Inc.’s Opposition to Plaintiff’s Motion to Compel
Responses to Interrogatories (“Defendant’s Response”), Doc. No. 123,
and plaintiff’s reply, Roxane Laboratories, Inc.’s Reply in Further
Support of its Motion to Compel Responses to Interrogatories
(“Plaintiff’s Reply”), Doc. No. 125.
For the reasons that follow,
Plaintiff’s Motion to Compel is DENIED.
I.
Background
Defendant AbbVie Inc. (“AbbVie”), is the holder of approved New
Drug Application (“NDA”) No. 22-417 for ritonavir tablets, 100 mg,
which is marketed and sold under the trade name Norvir®.
312 (S.D. Ohio), Doc. No. 58, ¶ 13.
No. 2:12-cv-
AbbVie also holds the regulatory
exclusivities associated with that NDA.
Id.
Plaintiff Roxane
Laboratories, Inc. (“Roxane” or “plaintiff”) has submitted Abbreviated
New Drug Application No. 202573 (“ANDA 202573”) to the United States
Food and Drug Administration in order “to obtain regulatory approval
to engage in the commercial manufacture, use, or sale of generic oral
ritonavir tablets, 100 mg,” which are the “bioequivalent” to Norvir®,
“before the expiration of the Listed Patents.”
No. 2:12-cv-312 (S.D.
Ohio), Amended Complaint, Doc. No. 56, ¶ 16.
Roxane filed suit in this Court on April 10, 2012 at 4:25 p.m.,
seeking a declaration of invalidity and non-infringement in connection
with Patent Nos. 7,148,359 (the “̔359 patent”) and 7,364,752 (the
“̔752 patent”) held by defendants Abbott Laboratories (“Abbott”) and
AbbVie and relating to the drug Norvir®.
See id. at ¶¶ 1, 11-13.
At
11:51 pm on that same day, Abbott filed suit in the United States
District Court for the District of Delaware, alleging that Roxane’s
ANDA infringed Abbott’s ‘359 patent, ‘752 patent, and Patent Nos.
5,648,497 (the “̔497 patent”), 6,037,157 (the “̔157 patent”), and
6,703,403 B2 (the “̔403 patent”), all related to the drug Norvir®.
2:13-cv-645 (S.D. Ohio), Complaint, Doc. No. 1, ¶ 3; 2:13-cv-645 (S.D.
Ohio), Amended Complaint, Doc. No. 8, ¶ 3. That action was transferred
to this Court on June 18, 2013.
Id., Order, Doc. No. 65.
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A Rule 16 conference was held in the Ohio action on June 20,
2012.
No. 2:12-cv-312 (S.D. Ohio), Preliminary Pretrial Order, Doc.
No. 29.
Noting the pendency of the Delaware action and in an effort
to “minimize the risk of duplicate discovery,” the Court ordered “that
discovery conducted in either of the pending cases may be utilized, if
otherwise appropriate, in the other case.”
Id. at p. 2.
On July 6, 2012 and September 7, 2012, Roxane propounded two sets
of interrogatories in the Ohio action directed to the ̔359 and ̔752
patents, which are referred to in the interrogatories as the “Patentsin-Suit.”
Plaintiff’s Motion to Compel, p. 5, Exhibits 7, 12.
Roxane
also specified that, should the Delaware action be transferred to the
Southern District of Ohio, “the term ̔Patents-in-Suit’ shall also
include” the ʽ497, ̔157, and ̔403 patents (collectively the
“transferred patents”).
Id. at Exhibit 7, p. 3 n.1.
Roxane also
sought extensive discovery in the Ohio action regarding the
transferred patents.
See Order, Doc. No. 64.
On December 19, 2012,
the Court conferred with counsel for all parties regarding Roxane’s
requested discovery relating to the transferred patents and concluded
that discovery related to the transferred patents was not relevant to
the Ohio action.
Id.
The United States District Court for the District of Delaware did
not conduct a Rule 16 conference nor did it issue a scheduling order.
Nevertheless, on February 14, 2013, the parties accepted that
court’s
jurisdiction for the limited purpose of resolving discovery disputes
and they stipulated to the “production of documents and things.”
No.
2:13-cv-645 (S.D. Ohio), Stipulation Regarding Discovery of Documents
3
and Things, Doc. No. 53.
On March 11, 2013, Roxane served
interrogatories in the Delaware action related to the transferred
patents.
Plaintiff’s Motion to Compel, Exhibit 14.
On June 18, 2013, AbbVie was substituted as a party for Abbott in
the Delaware action, and Roxane’s motion to transfer the Delaware
action to this Court was granted.
Nos. 13, 65.
No. 2:13-cv-645 (S.D. Ohio), Doc.
At the time, AbbVie had not answered any of Roxane’s
interrogatories addressing the transferred patents.
Response, p. 2.
Defendant’s
On July 3, 2013, AbbVie objected to the
interrogatories on the basis that the interrogatories had been
improperly served because they were not yet authorized in the
transferred action.
Id. at Exhibit 10.
On July 18, 2013, Roxane
filed Plaintiff’s Motion to Compel, seeking to compel response to
interrogatories relating to the transferred patents and deeming all
objections waived pursuant to Fed. R. Civ. P. 33(b)(4).
Plaintiff’s
Motion to Compel, p. 2.
As noted supra, the Delaware action was transferred to this Court
on June 18, 2013.
On July 23, 2013, the parties’ July 9, 2013
joint motion to consolidate the Ohio action and the transferred action
was granted. No. 2:12-cv-312 (S.D. Ohio), Doc. No. 120; No. 2:13-cv645 (S.D. Ohio), Doc. No. 69.
Roxane’s contested discovery requests contain both contention and
non-contention interrogatories.
AbbVie served responses to the non-
contention interrogatories on August 2, 2013; AbbVie has not responded
to the contention interrogatories.
Defendant’s Response, p. 2;
Plaintiff’s Reply, PAGEID 3580; No. 2:12-cv-312 (S.D. Ohio), Order,
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Doc. No. 124, p. 2.
The Court conferred with counsel on August 8,
2013 to establish a revised pretrial schedule for the consolidated
case.
No. 2:12-cv-312 (S.D. Ohio), Order, Doc. No. 124.
After
conferring with counsel, the Court ordered, inter alia, that AbbVie
respond to Roxane’s contention interrogatories no later than September
30, 2013 or by another date set by the Court in resolving Plaintiff’s
Motion to Compel.
II.
Id. at p. 2.
Standard
Rule 37 of the Federal Rules of Civil Procedure authorizes a
motion to compel discovery when a party fails to provide proper
response to requests for production of documents under Rule 34.
R. Civ. Pro. 37(a)(3)(B).
Fed.
“The proponent of a motion to compel
discovery bears the initial burden of proving that the information
sought is relevant.”
Martin v. Select Portfolio Serving Holding
Corp., No. 1:05–cv–273, 2006 U.S. Dist. LEXIS 68779, at *2 (S.D. Ohio
Sept. 25, 2006) (citing Alexander v. Fed. Bureau of Investigation, 186
F.R.D. 154, 159 (D.D.C. 1999)).
Rule 26(b) provides that “[p]arties may obtain discovery
regarding any nonprivileged matter that is relevant to any party’s
claim or defense.”
Fed. R. Civ. P. 26(b)(1).
purposes is extremely broad.
F.3d 389, 402 (6th Cir. 1998).
Relevance for discovery
Lewis v. ACB Bus. Servs., Inc., 135
“The scope of examination permitted
under Rule 26(b) is broader than that permitted at trial.
The test is
whether the line of interrogation is reasonably calculated to lead to
the discovery of admissible evidence.”
Mellon v. Cooper-Jarrett,
Inc., 424 F.2d 499, 500-01 (6th Cir. 1970).
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However, “district courts
have discretion to limit the scope of discovery where the information
sought is overly broad or would prove unduly burdensome to produce.”
Surles ex rel. Johnson v. Greyhound Lines, Inc., 474 F.3d 288, 305
(6th Cir. 2007) (citing Fed. R. Civ. P. 26(b)(2)).
See also Lewis,
135 F.3d at 402 (determining the proper scope of discovery falls
within the broad discretion of the trial court).
In determining the
proper scope of discovery, a district court balances a party’s “right
to discovery with the need to prevent ‘fishing expeditions.’”
Conti
v. Am. Axle & Mfg. Inc., 326 F. App’x 900, 907 (6th Cir. 2009)
(quoting Bush v. Dictaphone Corp., 161 F.3d 363, 367 (6th Cir. 1998)).
Finally, the party moving to compel discovery must certify that
it “has in good faith conferred or attempted to confer with the person
or party failing to make disclosure or discovery in an effort to
obtain it without court action.”
S.D. Ohio Civ. R. 37.2.
Fed. R. Civ. P. 37(a)(1).
See also
This prerequisite has been met in this case.
III. Discussion
As discussed supra, Roxane seeks an order compelling response to
interrogatories concerning the transferred patents.
Motion to Compel, PAGEID 3321.
Plaintiff’s
AbbVie does not dispute the relevance
of the interrogatories and, in fact, the Court has already ordered
AbbVie to respond to the interrogatories that remain outstanding.
2:12-cv-312 (S.D. Ohio), Order, Doc. No. 124, p. 2.
No.
Nevertheless,
AbbVie takes the position that Plaintiff’s Motion to Compel should be
denied because the contested interrogatories were not authorized
either in the Delaware action or by this Court.
PAGEID 3517.
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Defendant’s Response,
Roxane argues that it “[a]ppropriately and [t]imely [s]erved” two
sets of interrogatories directed to the transferred patents.
Plaintiff’s Motion to Compel, PAGEID 3324.
“First, Roxane served
interrogatories in the Ohio action . . . on July 6, 2012 and September
7, 2012 . . . .
Second, Roxane served interrogatories in the Delaware
action on March 11, 2013 . . . .”
Id.
These interrogatories “became
ripe,” Roxane argues, “[o]nce the Delaware action was transferred to
this Court” because (1) “the parties long ago met their Rule 26(f)
obligations in the Ohio case . . . [and] the parties filed a joint
motion to consolidate the two actions in Ohio” and (2) the discovery
requests in the Ohio action covered the transferred patents once the
Delaware action was transferred to this Court.
PAGEID 3578-79.
Plaintiff’s Reply,
See also id. at PAGEID 3581 (arguing that the
procedural posture of the Delaware action “became irrelevant once the
Delaware action was transferred.”).
Roxane’s arguments are without
merit.
Plaintiff’s Motion to Compel was filed on July 18, 2013, i.e.,
before the consolidation of the transferred action and the Ohio
action.
However, interrogatories directed at the transferred patents
were not proper in either action prior to consolidation.
Significantly, the court in the Delaware action did not issue a
scheduling order, neither this Court nor the court in the Delaware
action authorized discovery in the Delaware action prior to
consolidation, and the parties’ February 14, 2013 stipulation to
permit limited discovery, No. 12-cv-645 (S.D. Ohio), Stipulation
Regarding Discovery of Documents and Things, Doc. No. 53, did not
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authorize or contemplate interrogatories.
Roxane’s interrogatories in
the Ohio action do contemplate the discovery of information relating
to the transferred patents should the Delaware action be transferred
to the Southern District of Ohio, see Plaintiff’s Motion to Compel, p.
5, Exhibit 7 at p. 3 n.1; however, the transferred patents did not
become relevant to the Ohio action until the cases were consolidated
because neither the transfer of the Delaware action to the Southern
District of Ohio nor the parties’ agreement to consolidate rendered
the transferred patents relevant to the Ohio action.
See Fed. R. Civ.
P. 42 (“If actions before the court involve a common question of law
or fact, the court may . . . consolidate the actions”) (emphasis
added).
As this Court concluded on December 19, 2012, discovery
related to the transferred patents, as a group, was “not expressly at
issue in [the Ohio] action” and had not been established as relevant
to the Ohio action.
Order, Doc. No. 64.
Roxane has not provided a
persuasive reason to alter this conclusion.
The transferred patents
therefore did not become relevant to the Ohio action until the cases
were consolidated on July 23, 2013, i.e., five days after Roxane filed
its motion to compel.
Although discovery relating to the transferred patents is now
authorized in the consolidated cases, such discovery was not
authorized in either action prior to consolidation.
Roxane’s motion
to compel response to interrogatories propounded prior to the
consolidation and directed to the transferred patents is therefore
without merit.
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Roxane also seeks an order deeming all objections to the
contested interrogatories waived pursuant to Fed. R. Civ. P. 33(b)(4).
Plaintiff’s Motion to Compel, p. 2.
Roxane argues that AbbVie failed
to timely respond to the interrogatories and has therefore waived all
objections to the interrogatories.
Rule 33(b)(4) provides that “[a]ny
ground not stated in a timely objection [to an interrogatory] is
waived unless the court, for good cause, excuses the failure.”
R. Civ. P. 33(b)(4).
Fed.
Because Roxane’s interrogatories were not
authorized at the time they were propounded, AbbVie was not required
to timely object to those interrogatories.
AbbVie has not, therefore,
waived any objection to those interrogatories.
Plaintiff’s Motion to Compel, Doc. No. 115, is therefore DENIED.
AbbVie shall respond to Roxanne’s contention interrogatories by
September 30, 2013. See No. 2:12-cv-312 (S.D. Ohio), Order, Doc. No.
124, p. 2.
September 3, 2013
s/Norah McCann King_______
Norah McCann King
United States Magistrate Judge
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