Bayer Healthcare LLC v. Norbrook Laboratories Ltd et al

Filing 120

SCHEDULING ORDER; ORDER RE: DEPOSITIONS and; ORDER Re: Motion to Compel (Doc #79) signed by Judge Rudolph T Randa on 5/7/2010. Close of Fact Discovery is 7/28/2010. Expert Witness Report for the party with the burden of proof due by 9/3/2010. Rebutta l Expert Witness Reports due 10/1/2010. Plaintiffs Expert Report regarding objective indicia of obviousness due by 10/22/2010. Expert Discovery due by 12/3/2010. Telephonic Final Pretrial Conference set for 2/22/2011 02:00 PM before Judge Rudolph T R anda. 6-7 day Court Trial set for 3/21/2011 09:00 AM in Courtroom 320, 517 E Wisconsin Ave., Milwaukee, WI 53202 before Judge Rudolph T Randa. Defendants must not sell their accused ANADA product until 25 days after they provide plaintiff with notice of FDA final approval. Depositions to be taken at Norbrook's facility in Newry, Northern Ireland. Plaintiff Bayer Healthcare's Motion to Compel 79 is GRANTED. (cc: all counsel)(Randa, Rudolph)

UNITED STATES DISTRICT COURT E A S T E R N DISTRICT OF WISCONSIN B A Y E R HEALTHCARE, LLC, P l a in tif f , vs. N O R B R O O K LABORATORIES, LTD., and N O R B R O O K , INC., USA, Defendants. A M E N D E D SCHEDULING ORDER AND ORDER R E : DEPOSITIONS AND MOTION TO COMPEL C a s e No. 08-C-953 [C o n s o lid a t e d w/Case No. 09-C-108]

T h e Scheduling Order entered by this Court on February 18, 2009 in the above-titled a c tio n s is hereby amended. Deadlines that are amended as of this order are indicated by u n d e rlin e d text. I T IS ORDERED that: 1 . The close of fact discovery is July 28, 2010 [previously: February 20, 2010]. 2 . On or before September 3, 2010 [previously: March 20, 2010], the party with the b u rd e n of proof on issues at trial must notify the opposing party of any expert witnesses th e y may call at trial, and must submit with that notice a report containing all the in f o rm a tio n required by Rule 26(a)(2)(B) of the Federal Rules of Civil Procedure, or the p a rty with the burden of proof on issues for trial will be barred from calling such witnesses a s experts at trial. 3 . On or before October 1, 2010 [previously: April 24, 2010], each party must notify th e opposing party of any rebuttal expert witnesses the party may call at trial, and must s u b m it with that notice a report containing all the information required by Rule 26(a)(2)(B)

of the Federal Rules of Civil Procedure, or that party will be barred from calling such re b u ttal witnesses as experts at trial. 4 . On or before October 22, 2010 [previously: May 14, 2010], the plaintiff must n o tif y the defendants of its expert witnesses regarding objective indicia of obviousness and s u b m it with that notice a report containing all the information required by Rule 26(a)(2)(B) o f the Federal Rules of Civil Procedure, or the plaintiff will be barred from calling such w itn e ss e s as experts at trial. 5 . All requests for expert discovery must be served by a date sufficiently early so th a t all expert discovery in this case can be completed no later than December 3, 2010 [ p re v io u s ly: June 30, 2010]. Neither the pendency of motions nor settlement discussions s h a ll affect any of the dates set in this action, and neither shall justify delays in the taking o f expert discovery. 6 . On February 22, 2011, at 2:00 p.m. (CT), the Court will initiate and conduct a f in a l pretrial conference call. Pursuant to Civil L. R. 16.3, each party must serve and file a final pretrial report in compliance with the Pretrial Report Order attached hereto and in c o rp o ra te d herein. 7 . This case will be tried to the Court. This case will be called for trial at 9:00 a.m. ( C T ) on March 21, 2011. The trial is estimated to last six to seven days. 8 . To provide the plaintiff the opportunity to seek preliminary relief, in the event th a t the defendants' Abbreviated New Animal Drug Application ("ANADA") is approved p rio r to this Court's adjudication of the plaintiff's claims, the defendants must not sell or o f f e r for sale their accused ANADA product unless and until 25 days after they have p ro v id e d the plaintiff with notice that the Food and Drug Administration has issued a final a p p ro v a l of the defendants' ANADA.

9. The parties' April 26, 2010, status report discloses that a discovery dispute has a rise n regarding the location for the depositions of Norbrook witnesses, who reside in N o rth e rn Ireland, in or near the City of Newry. Norbrook asserts they should be taken at th e witnesses' regular place of employment in Northern Ireland. Bayer maintains that they s h o u ld be taken in the United States at a location to be chosen by the Court. Previously, the parties had agreed to hold the depositions in Northern Ireland. H o w e v e r, an escalation of violence caused Bayer to reconsider its prior agreement. Having c a re f u lly considered Bayer's documentation regarding the situation in Northern Ireland, the C o u rt declines to require the Norbrook witnesses to travel to the United States and directs th a t the depositions of the Norbrook witnesses be taken at the Norbrook's facility in Newry. 1 0 . The Plaintiff Bayer Healthcare LLC ("Bayer") filed a motion to compel the D e f e n d a n ts, Norbrook Laboratories, Ltd. and Norbrook, Inc. USA (collectively " N o rb ro o k " ), to provide complete responses to Bayer's Interrogatories 16 and 17, and to B a ye r's Requests for Production 3, 4, 36, 38 through 40, 42, and 43. Norbrook asserts that the discovery sought is overbroad and/or irrelevant, and that Interrogatories 16 and 17 are p re m atu re . Bayer argues that Norbrook waived its right to assert that the two

in te rro g a to rie s are premature because it did not raise that objection in response to those in te rro g a to rie s and, in any event, they are not premature. R u le 26(b)(1) of the Federal Rules of Civil Procedure provides that "[p]arties may o b ta in discovery regarding any nonprivileged matter that is relevant to any party's claim or d ef en se" "Relevant information need not be admissible at the trial if the discovery appears re a so n a b ly calculated to lead to the discovery of admissible evidence." Nw. Mem'l Hosp. v . Ashcroft, 362 F.3d 923, 930 (7th Cir. 2004) (quoting Fed. R. Civ. P. 26(b)(1)). The contested discovery issues fall into three categories. The first category is in f o rm a tio n regarding the extent to which Norbrook expected that the generic product

would actually be used in a non-infringing manner when it filed its ANADA. The a ss o c ia te d discovery requests are Interrogatories 16 and 17, and Requests for Production 4 2 and 43. The subject discovery is relevant because Bayer must prove, inter alia, that N o rb ro o k 's product was specially adapted for an infringing use and has no substantial nonin f rin g in g use, and/or that Norbrook had knowledge of the patent and took steps to enco u rag e others to infringe it. Furthermore, the Court rejects Norbrook's belated argument th a t Interrogatories 16 and 17 should be denied on the ground that they are contention in te rr o g a to rie s presented too early in the case. See Thomas v. Betts Corp. v. Panduit Corp., N o . 93 C 4017, 1996 WL 169389*3-*4 (N.D. Ill. Apr. 9, 1996). At this juncture, Norbrook s h o u ld be capable of responding to the propounded questions. Therefore, Norbrook must p ro v id e a complete response to Bayer's Interrogatories 16 and 17, and Requests for P ro d u c tio n 42 and 43. The second category of disputed discovery requests relate to information about N o rb ro o k 's process for determining which generic drugs to bring to market. The related d is c o v e ry requests are Requests for Production 3, 4, and 36. Characterizing such

in f o r m a tio n as modus operandi evidence, Bayer seeks the information to gain insight into N o rb ro o k 's practices in analyzing markets and deciding whether to file ANADAs. Bayer's re q u e sts may lead to the discovery of relevant evidence and, therefore, the Court will re q u ire Norbrook to provide complete responses to Bayer's Requests for Production 3, 4, a n d 36. T h e third category of disputed requests seeks information regarding Norbrook's strat eg y for marketing and distributing its ANADA products. The pertinent discovery re q u e sts are Requests for Production 38 through 40. As with the second category, Bayer se e k s information tending to show how Norbrook's generic products have competed with th e ir name brand counterparts. Bayer maintains that Norbrook has followed, what Bayer

believes is the general model for generic brand companies; i.e., to intrude upon and " c ap tu re " the brand market. Bayer seeks information about Norbrook's pricing and

d istrib u tio n of products in the past, and information about its relationships with its d is trib u to rs and end-users. The requested information may lead to the discovery of relevant e v id e n c e regarding whether Norbrook encourages its distributors/end-users to infringe. These disputed requests are likely to lead to the production of relevant evidence. Therefore, th e Court will require Norbrook to provide complete responses to Bayer's Requests for P r o d u c tio n 38 through 40. Based on the foregoing, Bayer's motion to compel (Docket No. 7 9 ) is GRANTED. Dated at Milwaukee, Wisconsin this 7th day of May, 2010. B Y THE COURT:

s/ Rudolph T. Randa Hon. Rudolph T. Randa U .S . District Judge

PRETRIAL REPORT ORDER IT IS ORDERED that each party must file a pretrial report. Reports are due at least 14 days before the scheduled start of the trial or, if a final pretrial conference is scheduled, 7 days before the conference. The report must be signed by the attorney (or a party personally, if not represented by counsel) who will try the case. Sanctions, which may include the dismissal of claims and defenses, may be imposed if a trial report is not filed. The report must include the following: 1. 2. 3. A short summary, not to exceed 2 pages, of the facts, claims and defenses; A statement of the issues; The names and addresses of all witnesses expected to testify. Any witness not listed will not be permitted to testify absent a showing of good cause; A statement of the background of all expert witnesses listed; A list of exhibits to be offered at trial sequentially numbered according to General L.R. 26 where practicable; A designation of all depositions or portions of transcripts or other recordings of depositions to be read into the record or played at trial as substantive evidence. Reading or playing more than 5 pages from a deposition will not be permitted unless the Court finds good cause; An estimate of the time needed to try the case; and, If scheduled for a jury trial: a. b. c. 9. Any proposed voir dire questions; Proposed instructions on substantive issues; and A proposed verdict form.

4. 5. 6.

7. 8.

If scheduled for a bench trial, proposed findings of fact and conclusions of law. (See Fed. R. Civ. P. 52).

In addition to completing a pretrial report, counsel are expected to confer and make a good faith effort to settle the case. Counsel are also expected to arrive at stipulations that will save time during the trial.